IMAGE  EVALUATION 
TEST  TARGET  (MT-3) 


// 


i 


/. 


^ 


1.0 


I.I 


11.25 


IM    125 


2.2 


WUt_ 

U    II  1.6 


Photographic 

Sciences 

Corporation 


23  WEST  MAIN  STRIET 

WEBSTIR.N.Y.  I45S0 

(716)  S73-4S03 


\ 


;V 


<^ 


•>^ 


\ 


\ 


4(^/^. 


^^ 


C^ 


"•i^ 


CIHM/ICMH 

Microfiche 

Series. 


CIHM/ICMH 
Collection  de 
microfiches. 


Canadian  Institute  for  Historical  Microreproductions  /  Institut  Canadian  de  microreproductions  historiques 


Technical  and  Bibliographic  Notes/Notes  techniques  et  bibiiographiques 


The  Institute  has  attempted  to  obtain  the  best 
original  copy  available  for  filming.  Features  of  this 
copy  which  may  be  bibliographically  unique, 
which  may  alter  any  of  the  images  in  the 
reproduction,  or  which  may  significantly  change 
the  usual  method  of  filming,  are  checked  below. 


D 


D 


D 
D 


D 


0 


Coloured  covers/ 
Couverture  de  couleur 


I      I    Covers  damaged/ 


Couverture  endommag^e 


Covers  restored  and/or  laminated/ 
Couverture  restaurte  et/ou  peliicul^e 


I      I    Cover  title  massing/ 


Le  titre  de  couverturo  manque 

Coloured  maps/ 

Cartes  giographiques  en  couleur 

Coloured  ink  (i.e.  other  than  t-Soe  o^  biucK}/ 
Encre  de  couleur  (i.e.  autrj  ^r ,  ^.*ii^n.  ou  noi 


I      I    Coloured  plates  and/or  illustrations/ 


Planches  et/ou  illustrations  en  couleur 

Bound  with  other  material/ 
ReliA  avec  d'autres  documents 

Tight  binding  may  cause  shadows  or  distortion 
along  interior  margin/ 

La  re  liure  serr^e  peut  causer  de  I'ombre  ou  de  la 
distortion  le  long  de  la  marge  int^rleure 

Blank  leaves  added  during  restoration  may 
appear  within  the  text.  Whenever  possible,  these 
have  been  omitted  from  filming/ 
II  se  peut  que  certaines  pages  blanches  ajout^es 
lors  d'une  restauration  apparaissent  dans  le  texte, 
mais,  lorsque  cela  Atalt  possible,  ces  pages  n'ont 
pas  it4  fiim^es. 


Additional  comments:/ 
Commentaires  supplAmentaires; 


Various  paglngt. 


The 
to  tl 


L'Institijt  a  microfilm^  le  meilleur  exemplaire 
qu'ii  lui  a  6t6  possible  de  se  procurer.  Les  details 
de  cet  exemplaire  qui  sont  peut-dtre  uniques  du 
point  de  vue  bibllographique,  qui  peuvent  modifier 
una  image  reproduite,  ou  qui  peuvent  exiger  une 
modification  dans  la  methods  normale  de  filmage 
sont  indiquAs  ci-dessous. 


□   Coloured  pages/ 
Pages  de  couleur 


n 

D 


^ 


D 
D 


Pages  damaged/ 
Pages  endommag6es 

Pages  restored  and/or  laminated/ 
Pages  restaurdes  et/ou  pellicultes 

Pages  discoloured,  stained  or  foxed/ 
Pages  d^coior^es,  tachet^es  ou  piqu6es 

Pages  detached/ 
Pages  d6tach6es 

Showthrough/ 
Transparence 


The 
posi 
of  tl 
film 


Ori{ 

beg 

the 

sion 

othi 

first 

sion 

or  11 


I      I    Quality  of  print  varies/ 


Quality  in^gaie  de  I'impression 

includes  supplementary  material/ 
Comprend  du  materiel  suppiimentaire 


The 
shai 
TINI 
whii 

Map 

diffi 
entii 
begi 
right 
requ 
mati 


Only  edition  available/ 
Seule  Edition  disponible 

Pages  wholly  or  partially  obscured  by  errata 
slips,  tissues,  etc.,  have  been  ref limed  to 
ensure  the  best  possible  image/ 
Les  pages  totaiement  ou  partiellement 
obscurcles  par  un  feuillet  d'errata,  une  pelure, 
etc.,  ont  M  fllmtes  A  nouveau  de  fapon  A 
obtenir  la  mellleure  Image  possible. 


This  item  is  filmed  at  the  reduction  ratio  checked  below/ 

Ce  document  est  film*  au  taux  de  rMuction  IndlquA  ci-dessous. 


10X 

14X 

18X 

22X 

26X 

30X 

<^' 

12X 

IfX 

aox 

24X 

28X 

32X 

Th«  copy  filmed  here  has  b—n  r«produc«d  thanks 
to  the  ganarosity  of: 

Supreme  Court  of  Canada 
Library 

Tha  imagas  appaaring  hara  ara  tha  baat  quality 
possibia  considaring  tha  condition  and  lagibility 
of  tha  original  copy  and  in  Icaaping  with  tha 
filming  contract  spacifications. 


L'axamplaira  filmA  fut  raproduit  grdce  A  la 
gAnAro8it6  da: 

Co^-r  suprSme  du  Canada 
Bibliothdque 

Las  imagas  suivantes  ont  iti  reproduites  avec  le 
plus  grand  soin,  compte  tenu  de  la  condition  at 
da  ia  nattat*  da  l'axamplaira  film*,  at  en 
conform^tA  avac  las  conditions  du  contrat  da 
filmaga. 


Original  copiaa  in  printad  papar  covars  ara  filmad 
beginning  with  tha  front  covar  and  anding  on 
tha  laat  paga  with  a  printad  or  illustratad  impres- 
sion, or  the  back  cover  when  appropriate.  All 
other  original  copiaa  are  film^  beginning  on  the 
first  page  with  a  printed  or  illuatratad  Imprea- 
sion,  and  anding  on  the  laat  page  with  a  printed 
or  illustrated  impreaaion. 


The  laat  recorded  frame  on  each  microfiche 
shall  contain  tha  symbol  —^(meaning  "CON- 
TINUED"), or  the  symbol  V  (meaning  "END"), 
whichever  appliaa. 

Mapa.  plates,  charts,  etc..  may  be  filmed  at 
different  reduction  ratios.  Those  too  large  to  be 
entirely  included  in  one  expoaura  are  filmed 
beginning  in  the  upper  left  hand  corner,  left  to 
right  and  top  to  bottom,  as  many  framea  as 
required.  The  following  diagrama  illustrate  the 
method: 


Lea  axemplairas  originaux  do,nt  la  couvarture  en 
papier  eat  imprimte  sont  film^s  mn  commenpant 
par  le  premier  plat  at  9n  tarminant  soit  par  la 
darniAre  paga  qui  comporta  una  empreinta 
d'imprassion  ou  d'illustration,  soit  par  le  second 
plat,  salon  le  cas.  Tous  las  autras  axemplairas 
originaux  sont  filmte  en  commenpant  par  la 
pramiAre  page  qui  comporte  una  ampreinte 
d'imprassion  ou  d'illustration  at  en  terminant  par 
la  darniAre  paga  qui  comporta  una  telle 
ampreinte. 

Un  dea  symbolas  suivants  apparaitra  sur  la 
darniira  image  da  cheque  microfiche,  selon  le 
cas:  la  symbole  — ^  signifie  "A  SUIVRE",  le 
symbols  y  signifie  "FIN  ". 

Les  cartas,  planches,  tableaux,  etc.,  peuvent  dtre 
filmte  A  des  taux  de  rMuction  diff^rents. 
Lorsque  la  document  est  trop  grand  pour  dtre 
reproduit  en  un  seul  clichi.  il  est  filmi  d  partir 
da  I'angia  supArieur  gauche,  de  gauche  i  droite, 
et  de  haut  an  baa,  en  prenant  la  nombre 
d'imagas  nteessaire.  Les  diagrammas  suivants 
illustrant  la  mAthoda. 


1 

2 

3 

1 

2 

3 

4 

5 

6 

I 


DIGEST 


OF  THE 


LAW  OF  TRADEMARKS 

AS  PKliSENTKD   IX   THE 

REPORTED    ADJUDICATIONS 

OP    THE 

COURTS  OF    THE    UNITED    STATES,    GREAT    BRITAIN, 

IRELAND,    CANADA,    AND    FRANCE,    FROM    THE 

EARLIEST  PERIOD  TO  THE  PRESENT  TIME  ; 

TOGETUEH    WITU 

AN     APPENDIX 

CONTAINING 

THE   UNITED   STATES    STATUTES    AND   THE    TREATIES   OF   THE 

UNITED   STATES   CONCEKNIXG    TIUDEMAUKS,    AND    TUB 

UULE8   AND  FORMS  OF  THE  UNITED  STATES 

PATENT    OFFICE    FOU    TUEIR 

REGISTRATION. 


p.i      «^ 


4 


BY 


CHARLES     E.    CODDINGTON, 


COUNSELOR   AT   LAW. 


NEW  YORK  : 

WARD     &     PELOUBET. 

18V8. 


I^iUcicd  accord 


i".^'  l'>  acl  (>r( 


"",!,''-css,  in  file  year  1877. 


Ill  tlic  ollice  (iC  (lie  Jji 


KI.Ol.iiCT, 


>iiiriaii  ol'  Coii'i-i 


osH,  at  AV'ashi 


"tfloii. 


'T 


f 


TO 


WILLIAM     II.      WAIINEU, 


op 


•llli;  (  ITV  ()|.    M,\\    VOKK, 
THIS    \V(JliK     IS    IN.SCIiliiKD, 


A  MAHK  OK  Tin:  AITIIoii's   I'KIiSON.u,   IU;OA 


no. 


PREFACE. 


Although  the  first  reported  trademarji  case  came 
belore  tlie  courts  two  hundred  and  eiglity-seven 
years  ago,  nine-tenths  of  the  decisions  upon  tliis 
topic  liave  been  made  within  the  last  thirty  years 
and  more  tlian  one-half  of  th.m  since  the  year  180:,." 
inuring  the  past  ten  years  nearly  all  of  the  treaties 
and  statutes  for  the  protection  of  this  peculiar  kind 
of  property  liave  been  entered  into  and  enacted. 

Tlie  number  of  these  reported  cases  has  increased 
yearly,  and  the  records  of  the  Patent  OfRoe  show  a 
^veekly  increase  in  the  registration  of  trade  names 
ami  symbols.     These  facts  indicate  that  this  brancli 
of  tJie  law,  although  of  recent  growth,  is  attracting 
much  attention,  and  has  attained  no  inconsiderable 
importance.     The  benefits  accruing  to  the  manufac- 
turer and  tiader,  as  well  as  to  the  general  i,ublic, 
from  the  protection  of  trademarks,  and  the  fact 

tvj 


vl 


PuKrACE. 


tliat  tlioy  are  oftfMi  ol'  yiciilcr  value  (liaii  jialcnts — 
tlu!  onjoyiiieut  ol'  tlirlr  exclusive  use  beiu^-  willnjut 
limit  as  to  time  and  i»ei*liai)s  i)lai'e — would  easily 
account  for  the  prominent  position  ^vlli(•ll  this  sub- 
ject now  occupies  bel'on^  the  public  and  in  the 
courts.  The  decisicms  have  been  conllictint;  and  no 
digest  of  all  the  authorities  has  ever  been  pub- 
lished, although  the  judges  in  their  reported 
opinions  have  expressed  not  only  their  regret  that 
such  a  work  had  not  been  prepared,  but  also  their 
dissatisfaction  with  the  manner  in  which  these  cases 
havi^  been  treated  in  geneial  digests.  These  consid- 
erations have  pi'ompted  the  present  publication,  and 
have  encouraged  the  author  in  the  belief  that  it 
might  be  of  some  assistance  to  the  x^i'ofession. 

Up  to  the  i^resent  time  there  aie  reported  one 
hundred  and  seventy  cases  as  having  been  adjudi- 
cated in  the  courts  of  Great  Britain,  Ireland  and 
Canada,  one  hundred  and  seventy-eight  in  the 
courts  of  the  United  States,  and  about  an  equal 
number  in  the  courts  of  Fi-ance — all  decisions  in 
the  same  suit,  whether  below  or  on  ai)peal,  being 
counted  as  a  single  case.  The  following  table 
has  reference  to  the  English  and  American  de- 
cisions only,  and  exhibits  the  comparatively  recent 
growth  of  the  law   in    England    and  the  United 


PllEFACE. 


Vll 


Stales,    aiid    perhaps    may    .siiu'u'cst    of  her    reflec- 
tions. 

Tlie  first  case,  iiientioiK^d  in  tin?  IjooIxs.  was  dcter- 
mint'd  in  I.'jDO,  the  second  in  1742,  and  prior  to  ISO.") 
only  six  cases  are  reported.  After  ISO,")  the  nmnher 
of  decisions  reported  during  eacli  decade  is  as 
follows : 


180."i  to  1815,  inclusive, 

ISl.-i  "  IHi.l,  " 

1825  "  18;].-,,  " 

18;]r,  "  1845,  " 

1845  "  1855,  " 
1855  " 

1805  " 


18(55, 
1875, 


a 

5 
G 

l:) 

4U 

104 

1U8 


Since  ISin  the  increase  has  been,  propoi-tionately, 
mnch  greater,  althongh  in  many  of  the  States  of 
the  Union  no  trademark  cases  have  ever  been 
reported. 

A  digest  of  till  the  reported,  and  a  few  of  the  I'li- 
reported,  adjudications  in  the  courts  of  the  United 
States,  Great  Britain,  Ireland  and  Canada,  and  of 
the  principal  decisions  in  tlie  courts  of  France,  the 
treaties  between  the  United  States  and  foreign 
countries,  and  the  statutes  of  the  United  States 
conc(^rning  trademarks ;  and  the  rules  and  forms  of 
the  United  States  Patent  Office  for  tlieir  registra- 
tion,   are   contained   in   this   volume.      Although 


VI II 


Piji;f.\ce. 


l;il)ols,  a<lv('rtis(»iTi(!nfs,  business  signs,  names  of 
('sfal)lislnTients  ol'  tnide,  of  pnrtnersliips,  liotels, 
newspapers,  puMioafions,  Arc,  are  pronounced  l)v 
some  of  tlie  courts  and  jurists  not  to  l>e  trademarks 
in  a  strict  and  teclinical  sense,  yet  the  principles 
relative  to  those  subjects  and  trademarks  proper, 
are  so  nearly  analogous,  and  the  cases  in  which 
tliey  have  been  ajij^lied  are  so  often  corielatively 
cited  that  it  has  been  thought  proper  to  include  the 
decisions  in  which  those  subjects  are  considered. 

An  endeavor  has  been  made  to  present  the  dif- 
ferent points  decided  in  the  English  and  American 
cases  united  under  appropriate  heads  and  titles  ;  to 
combine  the  analytical  and  alphabetical  methods 
of  arrangement ;  to  state  ccmtroUing  facts  as  well 
as  principles,  and  to  follow  as  nearly  as  possible 
the  language  of  the  o[)inions. 

The  digest  of  the  French  decisions  is  exclusively 
the  work  of  Piiancis  Foup.es,  Esquire,  of  the  New^ 
York  Bar,  by  whom  the  reports  of  those  decisions 
were  obtained  in  Paris ;  and  through  his  learning 
and  industry,  the  author  is  enabled  to  present  to 
the  profession  in  this  country  a  valuable  contribu- 
tion from  a  source  almost  inaccessible. 

The  author  also  returns  his  thanks  to  John 
Sherwood,  William  D.  Hennen  (author  of  the 


f 

1 


PUKFACK. 


ix 


Louisiana  Di-est)  and  IIk.vkv  G.  Atwatku,  Ks- 
qui.v.,  .,r  the  New  Y«,rk  13ar,  fur  vali.'ahl. 
.su,u-!^vsti(>n.s. 

In  the  li()i)e  that  the  woik  may  supply  a  delj- 
ciency,  wlucli  has  uheady  been  seriously  iV-lt,  ijie 
authoi'  submits  the  result  of  liis  labors  to  the  gene- 
rous consideration  of  tlie  piofession. 


New  Yoniv,  Xuvenilicf  l.j    1877. 


C.  E.  C. 


CONTENTS. 


PAGE 

liXPLANATION  OP  ABBREVIATIONS, xij} 

Table  op  Cases  Reversed,  Criticised,  &c., xix 

Digest, ^ 

Trademark  Table, «qj 

French  Statutes o~n 

'     o  ( y 

French  Decisions, gg^ 

Appendix, 4^^ 

U.  S.  Statutes, 4g™ 

Rules  op  U.  S.  Patent  Office, 475 

Official  Forms, ^^g 

Treaties  and  Conventions, 431 

Table  op  Cases, 4^0 

^^^E'^' .!  513 


^^■m 


EXPLAKATIOi\  OF  ABBREVIATIONS. 


Abb.  Ct.  App.  Dec.  .Abbott's  Court  of  Appeals  Decisions,  N   Y 
^,  "•  ^  •■ Abbott's  Practice  Reports,  N.  Y 

t ;  •  ^'■-  ^-  ^ ^^'''''^"'«  P'-'^^tice  Reports,  New  Series,  x\.  Y 

^"''" Allen's  Reports,  Mass. 

Am.  Law  Re<^.,  . 

Am.  L.  R.,  or    [  .  ...American  Law  Register 
A.  L.  Re^r.  )  " 

Am.  L.  T.  R Amci-ican  Law  Times  Reports. 

Am.  L   T.  R.  N.  S.. American  Law  Times  Reports,  New  Ser^^3 

Ann.  de  la  Pro Annales  de  la  Propriety  Industrielle,  Artis- 

tiquo  et  Littoraire,  Paris. 

^     Atkyns'  Reports.  Chaucerv,  En;?. 

J,      '  ■■■:■ Rarbonr's  Reports,  Supreme  Court,  N.  Y 

Barn.  &  Ad.,  J    .  . . .  Barnewall     &    Adolphus'    Reports,    Ki„:..-, 
^-  &  ^^d-         (  Rench,  Enrr. 

Barn.&C,  J Barnewall    &    Creswell's    Reports,    Kiu-", 

^-  &  C.         S  Bench,  Eng. 

^I^^J-, Beavan's  Rei)orts,  Rolls  Court,  En<'. 

Blatch.,  or  y  _,,  '       ° 

Bl.  C.  C.      (     Blutchford's  Reports,  U.  S.  2d  Circuit. 

^"'''' Bosworth-s  .Rc,,orts,  Superior  Court,  N   Y 

City. 

^'7^ Brewster's  E<)uity  Reports,  Pcnna. 

JJ"V' R»«l''s  Ki'ports,  Kentucky. 

C-^e Courde. 

^-  ^^  <^"ass cour  de  Cassation. 

^"' California  Reports. 

CJutty's  Gen.  Pr Chitty's  General  Practice. 

txiii] 


Explanation  of  Aiusk'kn  iatioxs. 


r.ii    Ciiiciniiuli   S\i|i(r;(>r  (Ouit   IJcportiT,   Sijpe- 

lior  ft.,  (ill.,  (). 

Com.  T> Conuiion  J><.'iii-I\  h'tporis.  Ku^. 

Com.  J5.  N.  S Comiiioii  rxMuli   I '.c ports,  ^s'ew  iSirii'S,  Eny. 

Conn Coniii'cticvit  IvCjioils. 

Co.\  ('.  i' Cox  Crimiiiiil  C.isi  s,  Eng. 

(To.  Jiic Croku  (Janic-i,  K.  IJ.  imd  C.  P. 

Cusli Cusliiiig's  Kc|)oi-t>,  .Miiss. 

Dii\y Duly's  llcpuiis,  Common  IMoiw,  N.  Y.  City. 

Deady Dt'iuly's  llcpoits,  U.  S.  District  of  Oregon. 

Dears.  &  B.,  or      (  ..rx.;,rslev".s  &  Hell's  Crown  Cases.  Eng. 

Dears.  &  15.  C.  C.  ^ 

De  (i.  J.  &  t? De  Ge.\,  Jones  &  bmitli's  Reports,  Chan- 
eery,   Eng. 

De  G.  M.  &  G De  Ge.\,  Maenagliten  &  (iordon's  Reports, 

Clianeery,  Eng. 

Dill Dillon's  Re|K)rts,  U.  S.,  8lh  Circuit. 

Doug Douglas'  Reports,  King's  H(!neli. 

Dowl.  &  Ry Dowling  &  Ryland's  Rej)orts,  King's  Bench. 

Dr.  &  Sm Drewry  i  Sniale's  Reports,  Clumcery,  Eng. 

Duer Duer's  Reports,  Superior  Court,  N.  Y.  City. 

Eden  Inj.  Am.  Ed.  ..Eden  on  Injunctions,  American  Edition. 

E.  D.  Smith,  or  i  .  .  .E.  D.  Smith's  Reports,  Common  Pleas,  N.  Y. 

E.  D.  S.  (  City. 

El.  &E Ellis   and    Ellis'   Reports,    Queen's  Bench, 

Eng. 

Eng.  L.  R.  Ch.  Div.  .English  Law  Reports,  Chancery  Divisiou. 

Eng.  L.  «fc  Eq English  Law  &  Equity  Reports. 

G.  T General  Te.ra. 

Ga Georgia  ReporCs. 

GilT trillard's  Reports,  Chancery,  Eng. 

Gray Gray's  Reports,  Mass. 

Hare ....  Hare's  Reports,  Chancery,  Eng. 

Hem.  i^' M.,  or  )  .  . .  .Hemming's   &    Miller's   Chancery   Reports, 

H.  &  .M.  S  Eng. 

Hilt Hilton's  Reports,  Common  Pleas,  N.  Y.  City. 

H.  of  L.  Cas House  of  JiOrds  Cases. 

Holmes U.  S.  Circuit. 

Hopk.  Ch Ho})kins'  Chancery  Reports,  N.  Y. 

How.  App.  Cas Howard's  Appeal  Cases,  N.  Y. 

How.  Pr HowanPs  Practice  Re))orts,  N,  Y. 


I 


EXPLAN-ATIOX    OF    Annili: VIATIONS.  XV 

Iluanl  M.  de  Fab.. . .  JiOpovtoW.  ,1,.  L^^lslntion  .l.  Dortrino  ot  ,le 

Jiirispnidcnco  ci   matiei-,.  ,1,.  Maniiics  do 
Fabiuiuc,  etc.     l>ar  A.lii,„  Ih,,,,,!,  Paris 
1805. 

!!""•  • ;  •  • ^^"""^  Siij,i«.,„<.  Court  IJcports,  X    Y 

l^-^  •."  "'''^^- ; ^^-  ^'-  -'""'n^-.n-s  IJ,.por.s,  Cl.ancc-rv,  Eng- 

•  •'"'•'^^'  ^"^^  ''^ I'-i-^l'  Jnrist,  Xow  Series.  " 

^" Illinois  IJoports. 

Irish  Cli.,  or  ) 

Ir.  Cli.  >     ^'^''  Ciianccry  Reports. 

Irisii  Eq.,  or  ;  ^  .  , 

Ir.  Eq.  f     ^"''''  ^^ciJorts,  Equity  Series. 

'^"  *  " Jol.iison's  &  Ilemming's  Clmncery  Reports 

Enj^.  ' 

'^■*''^ ^""^•■'^  &  Spencer's   N.  Y.   Superior  Court 

Reports. 

'^"''•- Jurist,  Eng. 

■^'"'-  ^'^'-  '"^ J"i'st,  New  Series,  N.  S. 

K.  &  ,J.,  or  I 

Kay  &  J.      i"   ^^">'  ^^  -Tolmson's  Reports,  Chancery,  Eng. 

!^'''" ^^f'^n's  Reports,  Rolls  Court,  En- 

r  'n' f '^""'^  "^■'^^•'•t^'  ^"^'-  Y.  Court  of  Ippeals. 

^'-  *"'' I^ord  Chanceiior. 

^'-  "^ I-'iw  Journal,  Eng. 

^''  '^'^ Lords  Justices. 

l'  t"  x"  S*  r\. I'"'  '^*'"'''"''  ^^'"^  ^'"''^  Chancery,  Eng. 

/■  '  ■  ^^;  ^-  ,;  \ ]:'•''''  •^""'•"'••'-  ^'^-^v  Series,  Com.  Pleas,  Eng. 

L   '■  X   S  tr!' ■••■  '""  'r '"'"''  """^  '^••"'•^'  Exchequer,  EnJ 
i^.  J.  ^.  S.  II.  L.  .  .  .Law  Journal,  Xew  Series,  House  of  Lordi 

Eng.  ' 

L.  J.  N.  S.  JL  C Law  Journal,  New  Series,  Magistrates' Cases 

Eng.  ' 

L.  J.  K  S.  Q.  B Law  Journal,  New  Series,  Queen's  Bench, 

Eng. 

l'  Rf\"t'  ; ^'"'  ^^'''"'■*''  "'■■'"""'•y  ^PP^'-^l  Cases,  Eng. 

L.  I  .  E.  &  L  App.  .  .Law  Reports,  English  and  Irish  Appeds. 

^-  ,,!•    ';!' ^-'"-  Ii'"P«rts.  E.p.ity  Cases,  Eng. 

I'" ,,    [^■■^-  - J-"v  Times  Re|)()rts,  Eng. 

j\\  '^-  ^'-  ^ r^'^^v  Times  Rep  ,rts,  Xcw  Series,  En-^. 

'    ■  ^^" Louisiana  Annual  Reports.  ° 

'"' Lansing's  Report.s,  K.  Y.  Supreme  Court. 


XVI 


EXI'LANATIOX    OF    AbKUEVIATIOXS. 


Li\:^-.  Hiiz Legal  Gazette  Reports,  Peiiuii. 

\a"s.  lilt Legal  Intelligencer.  IMiilu.  Pa. 

Vi.  \\ Master  of  tiie  Holls. 

MeLean  .    McLeuu'.s  Heports,  U.  S.,  7th  Circuit. 

Mac.  &  Ct.,  or  > Macnaghten&  Gordon's   Heports,   Common 

JI.  &  Gold.      \  Pleas,  Eng. 

Mail  »fc  G.,  or  ) Manning    &  Granger's    Reports,    Common 

51.  ii  G.  S  Pleat",  Eng. 

Man.  G.  &  S Manning,  (iranger  &  Scott's  Reports,  Com- 
mon IJcnch,  Eng. 

JIass Massachusetts  Reports. 

5M Maryland  Reports. 

3Ier Meri vale's  Reports,  Chancery,  Eng. 

3Iich.  N.  P Michigan  Nisi  Prius  Cases. 

Mo Mi.ssouri  Reports. 

Mo.  L.  Rep.,  ox\    _  j^ionthly  Law  Reporter,  all  conrts,  American. 
3Io.  Law  R.         » 

Myl.  &  C,  or  /    jj^j^^^  ^  Craig's  Rcpi/rts,  Chancery,  Eng, 

5L  &  C.  » 

N.  C North  Carolina  Reports. 

N.  Y New  York  Court  of  Appeals  Reports. 

N.  R New  Reports,  Eng. 

Nev.  Si  M.,  or  )  ^^^w^  &  Manning's  Reports,  King's  Bench. 

N.  Y.  Leg.  Obs New  York  Legal  Observer. 

N.  Y.  Sup.  Ct New  York  Supreme  Court  Reports. 

N.  Y.  Super.  Ct New  York  Superior  Court  Reports. 

Off.  Gaz Official  Gazette,  U.  S.  Patent  Office. 

Paige Paige's  Chancery  Reports,  N.  Y. 

Pa.  St.  R Pennsylvania  State  Reports. 

Penn.  L.  J Pennsylvania  Law  Journal. 

Piiila Philadelphia  Reports,  Commor  Vc-as. 

Pick Pickering's  Reports,  M.'jss;'         ■:  v's. 

Poph Popham's  Rej)orts,  Kind's  i.,. 

Post Post's  Reports,  Slissouri. 

R.  I Rhode  Island  Reports. 

Robt Robertson's  Reports,  Superior  Court,  N.  Y, 

City. 

Rolle RoUe's  Reports,  Eng. 

S.  C Same  Case. 

S.  T Special  Term. 


ExPLAXATiox  OF  Abbueviations.        xvii 

^''"''^^ Sandford's  Reports,  Superior  Court,  N.  Y 

City. 

^'''"^^-  ^^ Sandford's  Chancery  Reports  N   Y 

T'''^, Sawyer's  Reports,  U.  S.,  9th  Circuit. 

^^^-  ''^^ Scottish  Jurist,  Scotland. 

^^-  ^-  ^ Scottish  Law  Reporter,  Scotland. 

f '"■  •  • Simon's  Chancery  Reports,  Eng 

f  ^'  ^^« Story's  Reports,  U.  S.,  1st  Circuit. 

J'^'t"' Swanston's  Reports,  Chancery,  Eng. 

•^  ^ Thompson  &  Cook's  N.  Y.  Supreme  Court 

Reports. 

^''^"'-  ^PP Transcript  Appeals,  N.  Y 

T'''^-  Civ Tribunal  Civil. 

Trib.  de  Com Tribunal  de  Commerce. 

^-  C Vice  Chancellor. 

vlf  T^  •„ ^l^'^y  *  J^«'™«'«  Reports,  Chancery,  Eng. 

i;-'-  J"'^ Vesey  Jun.  Reports.  '' 

^-  ^ Weekly  Notes,  Eng. 

^-  f Weekly  Reporter,  England. 

Wal IJr Wallace's  Reports,  U.  S.  Supreme  Court. 

Circuit.  »     .     .,     t 

U 


I    ! 


'■*», 


TABLE 


OP 


CASES    AFFIRMED,     REVERSED,     CITED, 
CRITICISED,    &c. 


(Note.— The  cases  included  in  this  table  are  those  only  cited 
in  the  opinions— not  those  in  the  briefs  of  counsel.  The  words 
"after,"  and  "before"  indicate  the  report  where  the  same  case 
has  come  before  the  court  on  some  interlocutory  or  other  ques- 
tion after  or  Icfore  the  final  determination.) 


Abbott  «.  Bakers  and  Confectioners'  Tea  Association  W  N 
1871,  p.  207;  S.  C,  affirmed,  W.  N.  1872,  p.  31;  cited,  20  W.' 
R.  720;  26L.  T.  R.  (N.  S.)757. 
Ainsworth  v.  Walmsley,  L.  R.  1  Eq.  518;  S.  C,  12  Jurist  (N.  S  ) 
205;  S.  C,  14  L.  T.  R.  (N.  S.)  220;  S.  C,  35  L.  J.  R.  (N  S  ) 
Ch.  352;  S.  C,  14  VV.  R.  363;  cited,  35  Cal.  76;  45  Scottish 
Jurist,  206;  4  Am.  Law  Times  R.  (N.  S.)  177. 

Allones«.  Elkan,  40  L.  J.   R.  (N.  S.)  Ch.  475;  S.   C,  L.  R   12 
Eq.  140;  S.  C,  19  W.  R.  867;  affirmed,  20  W.  R.  131-  S  C 
25  L.  T.  R.  (N.  S.)  813;  S.   C,  L.  R.  7  Ch.  130;  S.  C  ,  41  L 
J.  R.  (N.  S.)  Ch.  246. 

American  Grocer  Publishing  Association  v.    The  Grocer  Publish- 
ing Company,  51  How.  Pr.  402;  cited,  Id.  220. 

Ames  V.  King,  2  Gray,  379. 

Amoskcag  Manufacturing  Company  v.  Garner,  6  Aljb   Pr   (N   S  ^ 
265;  S.  C,  55  Barb.  151.  •       ■    -■> 

Amoskeag  Manufacturing  Company  v.  Garner,  4  Am.  Law  T  R 
(N.  S.)  176.  *     ■ 

[xix] 


R"1 


ll 


X'X 


Cases  Ciiiticis7:d. 


Aiiioskoii'^  Mainifiintuiin^f  Company  v.  Rpcar,  2  Samlf.  .lOO;  rltnj, 
niJarl).  (JO'J;  ',\  Ducr,  U27;  2   Abb.    Pr.  ;!22;  :{   Hlatclif.   448; 

4  Abb.  Pr.  88;  18  How.  Pr.  34!{;  24  IJarb.  1(!4;  4  Al)b.  Pr. 
147;  i:{  How.  Pr.  :588;  4  Abb.  Pr.  101;  2  IJosw.  7;  18  How. 
Pr.  07;  7  Bosw.  228;  5  Phihi.  40.5;  28  llow.  Pr.  12:$;  28 
How.  Pr.  207;  4  Hobt.  013;  5  Am.  Law  Hog.  (X.  S.)  r)94; 
47  IJarb.  40:3;  2  Aljb.  Pr.  (N.  S.)  402;  1  A1>1).  Ct.  of  App. 
Dec.  270;  5  Abb.  Pr.  (N.  S.j  218;  o  Trans.  App.  101»;  3 
Keycs,  590;  ;M  How.  Pr.  115;  49  Barb.  591;  57  Daib.  534; 
30  How.  Pr.  35;   2  Daly,   315;    35    Cal.   04;    35  Conn.    414; 

5  Abb.  Pr.  (N.  S.)  220  ;  44  Missouri,  170  ;  0  Abb.  Pr. 
(N.  S.)  279;  55  Barb.  107;  3  Duly,  54;  2  Brews.  318;  7 
Pliila.  255;  2  Brews.  325;  54  III.  405;  1  Dillon,  332;  1  Wil- 
son, 03;  45  N.  Y.  397;  10  Abb.  Pr.  (N.  S.)  304;  13  "Wallace, 
323;  0  Lans.  100;  13  Abb.  Pr.  (N.  S.)  399;  48  N.  Y.  377; 
45  Cal.  481 ;  15  Abl).  Pr.  (N.  S.)4;  1  T.  &  C.  029;  40  How.  Pr. 
159;  3  T.  &  C.  552;  58  N.  Y.  233;  49  Hjw,  Pr.  7;  4  Am. 
L.  T.  R.  (N.  S.)  181. 

The  Apollinaris    Company  (Limited)   v.  Norrish,   33  L.   T.  11. 

(N.  S.)242. 
Aycr  i>.  Hall,  3  Brews.  509;  S.  C,  8  Phila.  231;  S.    C,   1  Leg. 

Gaz.  124. 
Ayer  v.  liushton,  unreported. 
Banks  r.  Gibson,   35  L.  J.  R.  (N.  S.)  Ch.  592;  S.  C,  34  Bcav. 

500;  S.  C,  13  W.  K.  1012;  cited,  45  N.  Y.  302;  10  Abb.    Pr. 

(N.  S.)   309;  20  L.  T.   R.  (N.   S.)  391;    20    W.  R.    508;    2 

Ciu.  320. 
Barnctt  v.  Leuchars,  13  L.  T.  R.  (N.  S.)  495. 
In  re  Barrows'  application,  25  W.  R.  504;  affirming  S.  C,  36 

L.  T.  R.  (N.  S.)  291;  S.  C,  25  W.  R.  407. 
Barrows?'.  Knight,  OR.  I.   434;  cited,  4  Abb.  Pr.  (K  S.)  415; 

30  How.  Pr.   10;  44  Missouri,  177. 
Bass  V.  Dawber,  19  L.  T.  R.  (N.  S.)  036. 
Batty  v.  Hill,  1  H.  &  M.  204;  S.  C,  11  W.  R.  745;  S.  C,  8  L. 

T.  R.  (N.  S.)  791;  S.    C,  3  N.  R.  205;  cited,  11  W.  R.  933;  1 

H.  &  M.  290;  32  L.  J.  R.  (N.  S.)  Ch.  727;  8  L.  T.  R.  (N.  S.) 

831;  1  H.  &  M.  454;  5  Daly,  287;  59  N.  Y.  334. 
Beard  v.  Turner,  13  L.  T.  R.    (N.  S.)  747;  ciUd,  4  Am.  L.  T.  R. 

(N.  S.)  180. 
BcWv.  Locke,  8  Paige,  75;    cited,  11  Paige,   297;  2  Sandf.  Ch. 

012;  0   West.  L.  J.  85;  4  McLean,  519;  7  Cush.  333;  23  Barb. 


Casks  Cimticiskd. 


\::i 


COO;    7  Rosw.   225;  2   Abl..   Pr.   (X.  S.)  402;  2   Drews.    JHO; 

Deady,  OKi;  0  Hun.  1(18. 
Biiiiiiger  v.   Wiittlcs,  28  How.   Pr.  200;    clh:</,  4'.)   i'.arl).    r,\)-2\  :',:, 

Cal.  T(t;    t  Al>l).  J'r.  (N.    S.)  410;  ;!(!  How.  Pr.   IT;  5  Ahl..  Pr. 

(X.  S.)  220;  r,r,  lliuh.    107;  0   Al)b.   Pr.    (X.  S.)  27!);  3  Daly, 

54;  ly  Ahb.  Pr.  {:'.  S.)  JiOl. 
Dlackwell  ;•.  Arniistviid,  5  Am.  Law  Tinu's  R.  8'). 
IJIa.kwill  r.  Crahl!,  :'()  L.  .1.  R.  (N.  8.)  Cli.  r>04. 
BlacUw.li  /•.  Wri-iit,  7:j  X.  C.  yiO. 
Blaiicliarih-.  Hill,  2  Atk.   484;   afaJ,  4  McLean,    517;  2  Santlf. 

00.-) ;  24  L.  J.  R.  (X.  S.)  Ch.  034;   1  K.  &  J.   514;  3  Jurist  (N. 

S.)  9:!0;  :{  K.   &  J.   427;  3  K.   &  J.  420;  7  Bosw.  225;   1  N. 

R.  544;  0  Jurist   (X.    S.)  484;  8  L.  T.  U.    (X.  S. )  228;  ;;2  L. 

J.  R.  (X.   S.)  Ch.   550;  11   W.  R.   526;  20  Cui.  305;  2  Brc'w.s. 

327;  01  X.  Y.  231. 
Blotit'ld  i'.  Payne.  4  B.  &  Ad.  410;  S.  C.  1  Xev.  &  M.  353;  S.  C, 

3  L.  J.  R.  (X.  S.)  08;  cited,  4  McLean,  520;  2  Sandf.    OOfi;   13 

Ir.   Eq.  487;  7  Cush.   333;  4  L.   T.  R.  (X.    K.)    638;  7    Jurist, 

(N.  S.)  074;  2  J.  &  H.  143;  30  L.  J.  R.  (X.  S.)  Cli.  406;  L.  R. 

1  Eq.  302;  6  Abb.  Pr.  (X.  S.)  270;  55  Barlx  107. 
Bloss  V.  Bloomer,  23  Barb.  004. 
Boardman  v.  Meriden  Britannia  Company,  35  Conn.  403;  cited,  39 

Id.  461. 
Booth  V.  Jarrett,  53  How.  Pr.  169. 
Bowman  v.   Floyd,    3  Alien,   76;  cited,   110  Mass.    31;    111   Id 

244. 
Bradbury  v.  Beeton,  39  L.    J.  R.  (N.  S.)   Ch.  57;  S  C,  21  L.  T. 

R.  (X.  S.)  323;  S.  C,  18  W.  R.  33;  cited,  18  W.  R.  183;  21  L 

T.  R.  (X.  S.)  547. 
Bradbury  v.  Dickens,  27  Beav.  53;  cited,  23  W.  R.  454;  30  L.  T. 

R.  (X.  y.)  295;  01  N.  Y.  331. 
Bradley  i\  Xorton,  33  Conn.  157. 

Braham  v.  Bustard,  11  ^Y.  R.  1061;  S.  C,  1  PL  &  M.  447;  S.  C  , 
9  L.  T.  R.  (X.  S.)  199;  S.  C,  3  X.  R.  573;  cited,  15  Irish  Ch! 
80;  4  Abb.  Pr.  (X.  S.)  415;  36  How.  Pr.  10;  L.  R.  7  Ch.  622; 
41  L.  J.  R.  (X.  S.)  Ch.  086;  27  L.  T.  R.  (N.  S.)  223;  L.  R.  17 
Eq.  41;  43  L.  J.  R.  (N.  S.)  Ch.  65;  22  W.  R.  54. 
Broadhurst  v.  Barlow,  W.  N.  1873,  p.  312;  L.  R.  17  Eq.  38. 
Brook  V.  Evans,  2  L.  T.  R.  (X.  S.)  740;  arfirmed,  39  L.  J.  R.  fN. 
S.)  610. 

Brooklyn  White  Lead  Company?;.  Masury,  25  Barb,  416;  cited. 


t\ 


:ocu 


Casks  Ci:iticised. 


13  Mo.  L.  U.  221;  IS  How.  I'r.  09;  7  Bo-iw.  229;  9  I'.osw.  190: 


Abb.  I'r.  (N.  S.)  4(i2;   1  Abb.  Ct.  of  A]))).  I)<r 


r<»; 


Abb 


Pr.  (X.  S.  )217;  :5  Tnuis.  Ajip.  1(59;  ;i  KeycH,  iJ'MJ;  :!r>  How. 
Pr.  ll:J;  49  Barb.  597;  o7  Hiirb.  .W3;  S-j  Cul.  7.");  ."i  Al>b.  Pr. 
(N.  S.)220;  55  Ikrb.  1(57;  0  Ai)b.  Pr.  (X.  S.)279;  :'.  Daly, 
54;  2  Hrcws.  :i25;  1  Wilson,  (515;  1:5  Wallace,  325;  24  La.  An. 
99;  51  N.  Y.  194;  1  Holmes,  li»5. 


Bro 


WIl  ?'. 


.fiercer,  ;!7  X.  Y.  Saiierior  Ct.  (5  J.  &  S.)  2G5. 


Browne  v.  Freeman,  12  W.  H.  ;]()5;  S.  C,  4  New,  470. 
Buriress  v.  BiirL'ess,  ',i  I)e  G.  M.  &  G.  890;  S.  C,  17  Jurist,    292; 


L.  Sc  K( 


S.  C,  22  L.  J.  It.  (X.  S.)Ch.  G75;  S.  C,  17  Kng.  j..  iV  J-.ij.  'Z.tt 

cited,  18  Jurist,  10;  23  Eug.  L.  &  Eq.   57;  23  Eng.   L.  Sc  Eq. 

283;  23  L.  J.  li.  (X.   S.)   Cli.   255;  18  How.   Pr.  (57;  28  How. 

Pr.   207;  35  How.  Pr.  113;  57  Barb.  r,U\  crificiml,  37  L.  J.  K. 

(X.   S.)  Ch.  848;  cital,  5  Abb.  Pr.  (X.  S.)  220;  3  Daly,  54;    1 

Hun,  373 ;  3  T.  ifc  C.  551 ;  02  N.  Y.  433. 
Burgess  V.  Ilately,  20  Beav.  249. 
Burgess  v.  Hills,  20  Beav.  249;  S.  C,  28  L.  J.  R.  (X.  S.)Ch.  350; 

cited,  33  Beav.  579. 
Burke  v.  Cassin,  45  Cal.  407. 
Burnett  v.    Phalon,  12  3Io.   L.  R.  220;  cited,  7  Bosw.  229  ;  of- 

Jirmcd,  9  Bosw.  193. 
Burnett  v.  Phalon,  9  Bosw.  193;  cited,  5Pliila.  400;  49  Barb.  592; 

4  Abb.  Pr.  (X.  S.)  8;  35  How.  Pr.  78;  35  Cal.  75;  44  Missouri, 

177;  55  Barb.  107;  0  Abb.  Pr.  (X.  S.)  279;  1  Dillon,  332;  df- 

firmed,  1  Abb.  Ct.  of  App.  Dec.  207. 
Burnett  v.  PWalon,  1  Abb.  Ct.  of  App  Dec.  207;  S.  C,  5  Abb. 

Pr.  (X.  S.)  212  ;  S.  C,  3  Transcript  Ap.  107  ;  S.  C,  3  Keyes, 

594;  affirming,  S.   C,  9  Bosw.  193;  cited,   13  Abb.  Pr.    (X.  S.) 

399;  48  X.  Y.  370;  13  Abb.  Pr.   (X.  S.)  391;  S.   C,  lufore  12 

Abb.  Pr.  180;  S.  C,  21  How.  Pr.  100;  S.  C,  h^fore  11  Abb.  Pr. 

157;  S.  C,  19  How.  Pr.  530. 
Burrows  v.  Foster,  1  Xew,  150. 
Bury  V.  Bedford,  9  Jurist    (X.  S.)  950;  R.  C,  32  L.  J.  R.  (X. 

S.)  Ch.  741;  S.  C,  11  W.  R.  973;  S.  C,  8  L.  T.  R.  (X.  S.)847; 

(S.C,  heforo  1  Xew,  li);citod,\  II.  &  M.  284;  reversed,  10  L.  T.  R. 

(N.  S.)470;  S.  C,  33  L.  J.  R.  (X.  S.)  Ch.  405;  S.  C,  10  Jurist, 

(N.  S.)  503;  S.  C,  4  Xew  R.  180;  S.  C,  13  W.  R.  726;  reverml 

cited  111  Mass.  343;  cited,  GIN.  Y.  331. 
Byass  v.  Sullivan,  21  How.  Pr.  50. 


Casks  Ciiiticiskd. 


xxtn 


BjTou,  Lord    r.    Jolmston,  "J  .Mer.  20;  cltul,    10  Jurist,   140;   17 

'  L.  J.  1{.  (X.  S.)  Ch.  HI. 
Canal  ('niii|)any  '".  Clark.     Soe  Di'lawan;  ami  IIii(l.<i)ii  Canal  Cn. 

I'.  Clari\,  iii/rii. 
Ciindcu    r.    IKriv.  TA  III.    4:50  ;  cit,.I,  1   Dillon,  :5:i-:  ;  :l  T.  ic  C. 

.")4;  r»  Daly,  'JS7. 
Caniiam  r.  .lonos,  l  V.  it  H.  218  ;  .■/M,  4  .Mcl.i  an.  olS;  2  Sand. 

(HI  ;  2  U.  I.  ."jTO;  0  Hare,  2."iS;  3  Abb.  I'r.  ;120 ;  4  E.  D.  Sniitli, 

iJ!)2;  4  A1>1».  Pr.  147;   lo   llow.  Pr.  as8;  4  .New.  47S;  r,  I'hila. 

40:»;    5   Am.    Law.    Keg.    (N.    S.)   501;   54   III.  400;  0  lluu, 

108. 
Carmicliacl  r.  Latimor,  unreported. 
CurtR-r   /■.    CarliU;,  ;J1   Bcav.  202;  S.   C,   8  Jiulst  (^N.   S.)    18:5; 

c'ltnl,  :57  Conn.  205. 
Carticr   c.  May,  (unreported),  July  12,  1801,  Ueg.    Lib.  1801,  A; 

cited,    I.iidlow    and   Jenkyns   ou   Trademarks,    42;   Lloyd   on 

Trademarks,  55,  77. 
Carver  i\  Pinto   Lite,  20  W.  R.  i;}4;    S.  C,  41   L.  J.  \\.  (X.  S.) 

Ch.  02;  S.  C,  L.  R.  7  Ch.  90,  S.  C,  25  L.  T.  R.  (N.  S.)  722. 

Caswell   I'.  Davis,  4  Abb.   Pr.  (X.  S.)  0;  S.   C.,  :]5  How.  Pr.  70; 

cited,  15  Abb.  Pr.  (N.  S.)  4;  1  T.  &  C.  020;  40  How.  Pr.  150; 

(ijjiriiied,  58  X'.  Y.  22;.{ ;  infiriHdtion.  cited,  50  X.  Y.  •Vo~). 
Chappell  K.  Davidson,  8  De  G.  M.  «fc  G.  1;  tnHnuiu'j  S.  C,  2  K. 

&  J.  123. 
Chappell  c.  Sheard,  2  K.  &  J.  117;  {Sec  8  De  G.  M.  »fc  G.  1). 
Chcaviii  V.  Walker,  35  L.  T.  R.  (N.  S.)  757. 
Clioynski  v.  Cohen,  39  Cal.  501. 
Christie  v.   Christie,  W.  N.   1873,   p.  8;    S.   C,  reversed,  W.   N. 

1873,  p.  70. 
Christy  i".  3Iuri)hy,  12  How.  Pr.  77;  cited,  7  Bosw.  230;  6  Robt. 

539;  2  Rrews.  310;  3  Brews.  329;  12  Abb.  Pr.  (X.  S.)  99;  Gl 

X.  Y.  233. 
Chubb  e.  Grilliths.  35  Beav.  127. 
Churtou  r.  Douglas,  7  W.  R.  305;  S.  C,  5  Jurist  (N.   S.)  887; 

S.   C,  1  II.  V.  Joims.  174;  cited,  2  Cin.  313;  01  N.  Y.  231. 
Clark   f.  Clark.  25  Barb.  70;  cited,  12  :\Io.   L.   R.   224;  18  How. 

Pr.  OS;  0  IJosw.  100;  1  Abb.  Ct.  of  App.  Dec.  270;  5  Abb.  Pr. 


(N.  S.)  2r 


Trans.   App.  109;  3  Keyes,  590;  49  Barb.  591: 


Wil 
374; 


Barb.  535;  35  Cal.  75;  44  :\Iissouri,  178;  2  Brews.  325;  1 


son,  03;   13  Abb.  Pr.  (X.   S.)  300;  24  La.  An.  99;   1  Hun, 
T.  &  C.  552 ;  03  N.   Y.  433. 


XXIV 


Cases  Criticised. 


Clark  v.  Freeman,  17  L.  J.  R  (N.  S.)  Cli.  142;  S.  C,  12  Jurist, 

149;  S.    C,   11  Beuv.    112;   cited,  3  Abb.    Pr.   323;   4  E.   D. 

Smith,   393;    33  L.  J.  II.    (N.   S.)  Cli.  200;   13  W.  li.  289;  9 

L.  T.   R.  (N.  S.)  5.>9;  10  Jurist  (N.  S.)  81;  criticmd,  L.  R.   3 

Ch.  310 ;  L.  R,  7  Eq.  493 ;  cited,  3  Brews.  333. 
Clemens  v.  Such,  unreported. 
Cleraeut  v.   Muddick,   1   Gif.  98;    S.  C,  5  Jurist  (N.    S.)  592; 

cited,  4  Phila.   141;  7  Bosw.  229;  18  W.  R.  183;  21  L.  T.  R. 

(N.  S.)  547. 
Coats  V.  Goddard,  34  N.  Y.  Superior  Ct.  R.  118. 
Coats  r.    Ilolbrook.  2  Sand.  Ch.  580;  S.  C,  3  N.  Y.    Leg.   Obs. 

404;  cited,  3   Sand.    Cii.  013;  2  Sand.   Ch.  624;  13  Mo.  L.  R. 

362;  7  Cusli.   333;  17  Barb.  609;  2  Abb.    Pr.  322;  23  Barb. 

009;  2  Bosw.  7;  12  Mo.  L.  R.  224;  0  R.  I.  438;  4  Phila.  141;  9 

Bosw.  199;  2  Abb.  Pr.  (N.  S.)  462;  1  Abb.  Ct.  of  App.  Doc. 

270;  5   Abb.   Pr.   (N.   S.)  217;    3  Trans.  App.  169;  3   Keyos, 

596;  35   Cal.  65;  2   Mich.  N.   P.  123;  2  Brews.   331;  1   Wils, 

03;  40  Cal.  599;  6  Lans.  160;  4  Am.  L.  T.  R.(N.  S.)  182. 
Coats  V.    Piatt,   19  Leg.    Int.    213;    S.    C,  7  Pitts.  L.  J.   361; 

cited,  4  Phila.  141. 
Cocks  V.   Chandler,  L.  R.  11  Eq.  446;  S.  C,  19  W.  R.  593  ;  S. 

C,  24  L.  T.  R.  (N    S.)  379;  S.  C,  40  L.  J.   R.    (N.   S.)  Ch. 

575;  cited,  20  W.  R.  434;  L.  R.  17  Fq.  39. 
Colleen  V.  Brunton,  4  McLean,  516;  cited,  3  Blatchf.  448;  4  Abb. 

Pr,  158;  4  Phila.    141;  7   Bosw.   239;  5  Phila.    465;  4  Robt. 

013;  35  Cal.  75;  4  Abb.   Pr.   (X.  S.)  415;  30  How.   Pr.    16; 

44  Missouri,  177;  33  Md.   263;  3  Brews.  338;  1  Dillon,  333; 

1  Wilson,  63;  13  Abb.    Pr.  (N.  S.)  401;  45  Cal.  481. 
Coileen  t\  Brunton,  5  I^IcLoan,  256. 
CoUaday  v.  Baird,  4  Phila.    13!>;  c'ded,  5  Phila.  464;  2  Brews. 

307 ;  7  Phila.  39. 
Collins  Company©.  Brown,  3  Jurist   (N".  S.)  939;  S.  C,  3  K.  & 

J.    433;    cited,  28   L.    J.   R.   (N.    S.)  Ch.   60;  29  Cal.   390;  3 

Brews.  338;  01  N.  Y.  231;  45  L.  J.  R.   (N.   S.)  Ch.   503;  34 

L.  T.  R.  (N.  S.)808. 
Collins  Company  v.  Cohen  (or  Cowen).  3  Jurist   (N.  S.)  929;  S. 

a,  3  K.  &  J.  428;  cited,  7  Posw.   a28;  5  Am.  Law  Reg.   (N. 

S.)  594;  47  Barb.  482;  4'9  Barb.  595;  2  Brews.  317;  7  Phila. 

254;  3  Brews.  338;  10  Abb.    Pr.  (N.  S.)  364;  45  N.  Y.  208; 

1  Holmes,  195;  58  N.  Y.  335;  59  N.  Y.  335. 
Collins  Company  v.  Reeves,  38  L.  J.  R.  (N.  S.)  Ch.  50. 


Cases  Criticised. 


XXV 


s. 


& 

3 

34 


Collins  Company  v.  "Walker,  7  Weekly  R.  233. 

Tlu!  Colonial  Life  Assurance  Company  v.  The  Home  and  Colonial 

Life  Assurance  Company  (Limited),  33  L.  J.  R.  (N.  S.)  Ch.  741 ; 

8.  C,  33  Bcav.  549. 
Colton  V.  Thomas,  3  Brewster,  308;  cited,  2  Brews.  330. 
Comstock  V.  AVhite,  18  Uow.  Pr.  421. 
The  Congress  and  Empire  Spring  Company  v.  The  High  Rock 

Congress  Spring  Company,  10  Abb.  Pr.  (N.  S.)  848;  S.  C,  45 

N.  Y.  291;   reversing  S.  c',  57  Barb.  536;  cited,  51  N.  Y.  194; 

01  N.  Y .  229. 

Cook  v.  Starkweather,  13  Abb.  Pr.  (N.  S.)  392;  cited,  14  Abb.  Pr. 

(N.  S.)  212;  37  N.  Y.  Superior  Ct.  (5  J.  &  S.)  265;  49  How. 

Pr.  10. 
Consolidated  Fruit  Jar  Co.  v.  Dorflinger,  2  Am.  L.  T.  R.  (N.  S.) 

511. 
Cope  V.  Evans,  L.  R.  18  Eq.  138;  S.  C,  22  W.  R.  453;  S.  C,  30 

L.  T.  R.  (N.  S.)  293. 
Corwin?j.  Daly,  7  Bosw.  332;   cited,  12  Abb.  Pr.  188;   21  How. 

Pr.  103;  9  Bosw.  206;  28  How.  Pr.  207;  4  Robt.  014;  47  Barb. 

482;  2  Abb.  Pr.  (N.  S.)  463;  49  Barb.  591;  35  Cal.  75;  4  Abb. 

Pr.  (N.   S.)  416;    30  How.  Pr.  17;    5  Abb.  Pr.  (N.  S.)  220;    0 

Abb.  Pr.  (N.  S.)  279;  55  Barb.  167;  3  Daly,  54;  2  Brews.  318; 

7  Phila.  255;  2  Mich.  N.  P.  123;   G  Lans.  160;  3  T.  &  C.  549; 

49  How.  Pr.  8. 

Cotton  ®.  Gillard,  44  L.  J.  R.  (N.  S.)  Ch.  90. 

Crawshay  v.  Thompson,  4  M.  &  G.  357;  S.  C,  11  L.  J.  R.  (N.  S.) 
C.  X.  301;  cited,  6  Hare,  331;  4  McLean,  519;  2  Sand.  606;  11 
Hare,  84;  2  Abb.  Pr.  332;  4  Abb.  Pr.  159;  7  Bosw.  225;  31 
Beav.  297;  8  Jurist  (N.  S.)  184;  2  Abb.  Pr.  (N.  S.)  462;  3 
Brews.  311 ;  6  Abb.  Pr.  (N.  S.)  279;  55  Barb.  167;  2  Daly,  524; 

2  Brews.  328. 

Croft  «.  Day,  7  Beav.  84;  cited,  6  Hare,  334;  17  L.  J.  R.  (N.  S.) 
Ch.  144;  12  Jurist,  151;  2  Sand.  GOO;  13  Jr.  Eq.  489;  13 
Mo.  L.  R.  361;  7  Cush.  383;  18  Jurist,  8;  23  Eng.  L.  &  Eq. 
53;  11  Hare,  88;  2  Abb.  Pr.  324;  4  E.  D.  Smith,  890;  12  Mo. 
L.  R.  222;  4  Phila.  141;  9  Bosw.  197;  18  Irish  Ch.  390;  38  L. 
J.  R.  (N.  S.)  Ch.  200;  12  W.  R.  289;  9  L.  T.  R.  (N.  S.)  559; 
10  Jurist  (N.  S.)  81;  38  How.  Pr.  207;  criticised,  5  Am.  Law 
Reg.  (N.  S.)  593:  cited,  3  Abb.  Pr.  (N.  S.)  463;   49  Barb.  595; 

50  Barb.  243;    3  Brews.  305;    7  Phila.  39;    3  Brews.   810;   60 
Pc:  a.  150;  44  Missouri,  177;  55  Barb.  107;  0  Abb.  Pr.  (N.  S.) 


XXVL 


Cases  Criticised. 


270;  18  W.  R.  183;  21  L.  T.  R.  (N.  S.)  547;  33  Md.  203;  18 
W.  R.  565;  2  Brews.  328;  2  Brews.  349;  1  Dillon,  332;  1  Wil- 
son, 03;  24  La.  An.  100;  45  Cal.  481;  1  Hun,  373;  3  T.  &  C. 
551 ;  02  N.  Y.  432. 

Curtis  V.  Bryan,  36  How.  Pr.  33;  S.  C,  2  Daly,  312. 

Dale  V.  i^iitlison,  12  Abb.  Pr.  237,  cited,  2  Brews.  331. 

Davis  B.lvendall,  2  R.  I.  500;  cited,  0  R.  I.  438;  4  Phila.  141;  4 
Abb.  Pr.  (N.  S.)  415;  30  How.  Pr.  16;  37  Conn.  295. 

Davis  V.  Kennedy,  unreportad. 

Dawes  v.  Davies,  unrejmrtcd. 

Day  «.  Binning,  1  C.  P.  Cooper,  489 ;  cited,  5  Am.  Law.  Reg.  (N. 
S.)  594;  2  Brews.  328;  2  Brews.  349;  4  Brews.  47. 

Day  V.  Day,  Eden  on  Injunctions,  1st  Am.  Ed.  220;  cited,  3 
Myl.  &  C.  13. 

Dayton  v.  Wilkes,  17  How.  Pr.  510;  cited,  4  Phila.  141;  4  Abb. 
Pr.  (N.  S.)  52;  7  Robt.  349;  6  Hun,  108. 

Decker  v.  Decker,  52  How.  Pr.  218. 

Deiz  V.  Lamb,  0  Robt.  537;  cited,  12  Abb.  Pr.  (N.  S.)  99. 

The  Delaware  and  Hudson  Canal  Company  v.  Clark,  7  Blatch. 
112;  S.  C.  affirmed,  13  Wallace,  311;  affirmation  cited,  10 
Blatch.  85;  51  N.  Y.  190;  1  Hohucs,  194;  13  Abb.  Pr.  (N.  S.) 
391;  75  Pa.  St.  471;  58  N.  Y.  235. 

Delondro  v.  Shaw,  2  Sim.  237;  cited,  2  Sand.  Ch.  012;  2  Sand. 
Ch.  014;  24  L.  J.  R.  (K  S.)  Ch.  034;  1  K.  &  J.  515. 

Dent  V.  Turpin,  2  J.  &  H.  139;  30  L.  J.  R.  (N.  S.)  Ch.  495;  7 
Jurist  N.  S.  073;  S.  C,  4  L.'  T.  R.  (N.  S.)  637;  cited,  1  H.  & 
M.  270;  11  W.  R.  740;    8  L.  T.  R.  (X.  S.)  791;   2  N.  R.  205; 

11  W.  R.  933;  1  H.  &  M.  290;  32  L.  J.  R.  (N.  S.)  Ch.  737;  8 
L.  T.  R.  (N.  S.)  831;  12  L.  T.  R.  (N.  S.)  76;  L.  R.  1  Eq,  525; 

12  Jurist  (N.  S.)  207;  14  L.  T.  R.  (N.  S.)  221;  35  L.  J.  R.  (N. 
S.)  Ch.  350 ;  14  W.  R.  303. 

Derringer  v.  Plate,  29  Cul.  292. 

Devlin  v.  Devlin,  4  Hun,  051 ;  affirmed  by  N.  Y.  Court  of  Appeals 

(not  reported). 
Dickson  v.  iPMastor,  Gamble's  Index,  983;  S.  C,  11  I.  Jurist 

(N.  S.)  202. 
Dixon  V.  Fawcus,  7  Jurist  N.  S.  895;  S.  C,  30  L.  J.  R.  (K  S.)  Q. 

B.  13r;  S.  C,  9  W.  R.  414;  S.  C,  3  L.  T.  R.  (N.  S.)  093;  S.  C, 

3  El.  &  El.  537;  cited,  13  Irish  Ch.  401. 
Dixon  i'.  Iloiden,  L.  R.  7  Eq.  488. 
Dixon  V.  Jackson,  3  Scottish  L.  R.  188 ;  cited^  10  Scottish  L.  R.  175. 


••A 


Cases  CrjTirrsED. 


XXV II 


525; 

,.  (N. 


.)Q. 


175. 


Dixon  (Vncibk;  Co.  -•.  GucrgenlK'iiu,  2  Brows.  321 ;   S.  C,  7  Pliila. 

408;    cittul.  1  Wilson,  (i:};  8  Pliila.  2:52;    3  lirows.  51:];    1    I.cir. 

(iiiz.  120;  45  X.  Y.  2ftS;   10  Ahh.  Pr.  (X.  S.)  []fi5. 
Eastcourt  r.  Estcoiirt  Hop  Essonco  Company  (Eiinitcd ).  41   L.  J. 

P..  (\.  S.)  Ch.  22;};  S.  C,  L.  H.  10  Ch.  270;   S.  C.,  :i2  L.  T.  P.. 

(X.  S.)  SO;  8.  C,  2}W.  K.  ;!i:5;  nirr.siiiff  S.  C,  J'.l  L.  T.  R.  (X. 

S. )  .507. 
Edt'lstcn  r.  Edclsten,  9  .Iiirist  X.  S.  479;    S.  C.  1  Dc  (i.  .1.  &  S. 

185;  8.  C,  1  X.  II.  aOO;  S.  C,  11  W.  H.  1528;  S.  C..  7  L.  T.  R. 

(N.  S. )   70S;  S.  C,  a/kr  10  L.  T.  R.  (X.  S.)  780;  c/W,  :5:)  Hcav. 

581;    4  Ahl).  Pr.  (X.  S.)  415;  ^0  How.  Pr.  10;  0  Abb.  Pr.  (X. 

S.)  270;   55  Barb.  107;   L.  R.  18  Eq.  150;  22  \V.  i{.  455;  :{0  L. 

T.  R.  (X.  S.)  295;  01  N.  Y.  2:}1. 
Edflstcn  /■.  Vick,  11  Hare.  78;  S.  C,  2:?  Eni?.  L.  &  Kq.  51;  S.  C, 

18  Jurist,  7;  citnf,  1  X.  R.  551;   11  ^V.  R  O.'J:?;    1  H.  *t  M.  293; 

32  L.  R.  .1.  (X.  8.)  Ch.  729;  8  L.  T.  R.  (X.  S.j  831;   11  .Inris- 

(X.   S.)  518;  35   L.  J.  R.  (N.  S.)  Ch.  05;  13  W.  R.  077;  12  L. 

T.  R.  (X.  S.)  740;  11  H.  of  L.  Cas.  543;  rritiriml,  5  Am.  Law 

Reg.  (X.  S.)  593;  cited,  30  L.  J.  R.  (X.  S  )  Ch.  231;   2  Brow.s. 

311;  44  Missouri,  178;  2  Brews.  325;  1  Dillon,  3:;3;   1  Wilson, 

03;  13  Abb.  Pr.  (X.  S.)  401. 
Ed-rinton  r.  Edginton,  11  L.  T.  R.  (X.  S.)  199. 
Edmonds  r.  Benbow,  Seton  on  Decrees,  3d  Ed.  905. 
Ellis  r.  Zcilin,  42  Ga.  91. 
Emerson  r.  Badger,  101  Mass.  82;  cited,  110  Mass.  32;  111  Mass. 

242. 
Fabcr  v.  D'Utassy,  11  Abb.  Pr.  (X.  S.)  399. 
Faber  v.  Faber,  49  Barb.  357;  S.  C.  3  Abb.  Pr.  (N.  S.)  115;  cited, 

1  Hun,  374;  3  T.  &  C.  552;  03  X.  Y.  433. 
Faber  v.  Hovey,  unreported. 
Falkinburg  r.  Lucy,  35  California,  52;  cited,  39Cal.  504;  13  Abb. 

Pr.  (X.  8.)  391;  45  Cal.  481. 
Farina  r.  Silverlock,  0  De  G.  M.  &  G.  214;   S.  C,  2  Jurist  X.  8. 

1008;  8.  C,  20  L.  J.  R.  (X.  8.)  Ch.  11 ;  rcrcrsiiuj  8.  C,  1  Kay  & 

J.  509;  8.  C,  24  L.  J.  R.  (X.  8.)  Ch.  032;  8.  C, after  4  K.  &  J. 

050;  cited,  3  K.  &  J.  432;  4  K.  &  J.   753;  3  El."&  El.  547;  3 

L.  T.  R.  (X.  S.)  094;   9  W.   R.  415;  30  L.  J.  R.  (X.  8.)  Q.  B. 

140;   7  Jurist  N.   8.  897;    1   IL  &  M.  202;  49  Barb.  593;  33 

Md.  208. 
Fcnn  V.  Bollos,  7  Abb.  Pr.  202. 
Ferguson  v.  The  Davol  Mills,  2  Brews.  314;  S.  C,  7  Phila.  253. 


XXVlll 


Cases  Cuitioised. 


! 


Fctridgc  v.  Merchant,  4  Aljb.  Pr.  15(5  (see  Fetridge  v.  Wolls.  fh. 

144);  clM,    7  Bosw.  2;51 ;  1'2  Abb.  Pr.  240;  44  Missouri.  ITT. 
I'Y'tridgc  ('.  Wolls,  4  Abb.  Pr.  144;    S.  C,  1:5  How.  Pr.  ;58.',  (sio 

4  Abb.   Pr.    inC);    tufa/,  i  Abb.    Pr.    158;    28  How.  I'r.  (18;    7 

Bosw.  2:i2;   12  Abl>.  Pr.  240;    5  Pliiia.  40r»;    28  How.  Pr.  20T; 

4Uobt.  012;    5  Am.   Law  Reg.  (N.  S.)  597;   47  Barb.  40:5;    41) 

Barb.  501;  57  Barl).  5:54;  :50  How.  Pr.  ;S9;  2  Daly,  :510;  :55  Cal. 

G4;    G  Abb.   Pr.  (X.   S.)  270;    55  Barlj.  107;   2  Brews.  ;517;   7 

Pliila.  254;  2  Brows.  ;5:5G ;  0  Biisli,  1:50;  45  Cal.  481:  58  N.  Y 

234 ;  5  Daly,  287 ;  50  N.  Y.  :5:54 . 
Fillcy  /•.  Fassftt,  44  Missouri,  108;  ritid,  2  Brews.  3:51;  1  Dillon. 

8:52;   1  AVilson,  0:3;  4  Am.  Law  T.  K.  (N.  S.)  182. 
Flavell  r.  Harrison,  19  Eng.  L.  &  I^q.  15;  S.  C,  10  Hare,  407;  S. 

C,  17  Jurist,  :108;  rilol,  11  Hare,  87;  11  W.  R.  9:5:5;  1  II.  &M. 

29:5;  M  L.  J.  R.  (X.  S. )  C\\.  729;  5  Pliila.  408;  11  Jurist  (X. 

S.)  518;  :55  L.  J.  R.  (X.  S. )  Cli.  05;  1:5  W.  R.  077:   12  L.  T.  R. 

(N.  S.)  740;  11  H.  of  L.  Cas.  54:j;  ;50  L.  J.  R.  (X.  S.)  Cli.  229; 

30  How.  Pr.  39;  2  Daly,  317;  00  Ponn.  100;  L.  R.  7   Cli.  025; 

41  L.  J.  R.  (X.  S.)  Ch.  087;  27  L.  T.  R.  (N.  S.)  225;  58  X.  Y. 

2:50;  5  Daly,  287;  59  X.  Y.  335, 
Foot  V.  Lea,  13  Irish  Eq.  484. 
Ford  V.  Foster,  L.  R.  7  Ch.  Oil;  S.  C,  41  L.  J.  R.  (N.  S.)  Ch. 

082;    S.  C,  20  W.  R.  318;  S.  C,  27  L.  T.    R.  (X.  S.)   219;  rc- 

versing   S.  C,  20  W.  R.  311;   cital,  27  L.  T.  R.  (X.  S.)  57;    41 

L.  J.   R.  (N.   S.)  Ch.  755;  L.  R.    14  Eq.  549;   L.    R.    17  Eq. 

37. 
Fowle  ('.  Spear,  7  Ponn.  Law  Jour.  170;  cited,  3  Wall.  Jr.  142. 
Franks  v.  Weaver,  10  Beav.  297;  cited,  L.  R.  5  E.  &   L  App.  518; 

27  L.  T.  R.  (X.  S.)  ;395;  42  L.  J.  R.  (N.  S.)  Ch.  137. 
Fulton  r.  Sellers,  4  Brews.  42. 
Fullwood  V.  FuUwood,  cited,  L.  R.  17  Eq.  40. 
Gardne    v.  Bailey,  unreported. 
Genin  r.  Chadsey,  cited,  2  Brews.  330. 
Gillis  r.  Hall,  2  Brews.  342, 
Gillis  V.  Hall,  8  Phila.  231;    S.  C,  3  Brews.  509;    S.  C,  1  Leg, 

Ga^.  124. 
Gillott  i'.  Esterbrook,  47  Barb.   455;    cited,  44  Jlissouri,  177;    2 

Brews.  325;  1  Dillon,  332;    1  Wilson,  03;  4  Am.  L,  T.  R.  (X. 

S.)  181;  S,  C,  affirmed,  48  N.  Y.  374;  uj^irmatiun  cited,  14  Abb. 

Pr,  (N.  S.)  211. 
Gillott  V.  Kettle,  3  Duor,  024. 


Casks  Cuiticised. 


XXIX 


Eq. 


Tl!(>  (;i(>n  and  Hall  .Manufacturing  Company  v.  Hall,  G  Laiis.  158- 

8.  ('.,  trirrmJ,  01  N.  Y.  220. 
CUcndon  Iron  Company  v.  Uliler,  75  Pa.  St.  407. 
Gicnny  i\  Smith,  3  Dr.  &  Sm.  470;  S.  C,  11    Jurist  (X.  S.)  904; 
S.  C..  0  X,-u-  R.  ;3G;);  S.  C,  l!}  L.  T.  R.  (X.  S.)  11;  clta/,  20  f/ 
T.  R.  (X.  S.)  T.J7;  01  X.  Y.  2:34. 
Godiliot  r.  Hazard,  4i)  How.  Pr.  5. 
Courard  r.  Trust,  :)  Hun,  027. 
Gout  r.  .Mcplon;lu.  0  Beav.  0!);  S.  C,  1  Ciiitty's  Gen.  Pr.  72;  rifrd. 

2   Sand.  C'li.  r,i»4;  4   McLean,  518;    12  Mo.  L.  R.  224;  7'rosvv" 

221);  !)  Bo.sw.  1!)<):  l.j  Irish  Cli.  81;  2  Brews.  329;  24  La.  An.  <)9. 
Graham  ;•.  Plato,  40  C"al.  59:j. 
Grayr.  Koch,  2  .Mich.  X.  P.  119. 
Green  r.  Rookc.  W.  X.  1872,  p.  49. 
Green  r.  Sli"  .herd,  :]8  Scottish  Jurist,  .523. 
Guilhon  i.k  Lindo,  9  iJosw.  005. 
Hall  T.  Barrows,  9  Jurist  (X.  S.j  4S;l;    S.  C,  8  L.  T.  R.  (N.  S.) 

227;  S.  C,  1   X.  R.  54:5;    8.  C,  11  \V.  R.  525;    8.  C,  ;32    L.  J. 

K.  (N.  S.)  Ch.  548;  d/nf,  U    Jurist  (X.  8.)  058;  32  L.  J.  P..  (X. 

S.)  Ch.  747;    11  W.  R.  975;    8  L.  T.  R.  (X.  8.)  850;    11  W    R 

9:!2;    1  H.  &  M.  284;    32  L.  J.  R.  (X.  S.j  Ch.  725;    8  L.  T.  !{. 

(X'.  8.)  830;    rcver.'si-J,  10  Jurist   (N.  8.)    55;    8.  C.,  12   W.  R. 

322;    8.  C,  33  L.  J.  R.  (X.  S.)  Ch.  204;    8.  C,  9  L.  T   R    (X 

8.)  501. 

Hall  V.  Barrows,  10  Jurist  (X.  8.)  55;  S.  C,  12  W.  R.  322;  8  C 
33  L.  J.  R.  (X.  8.)  Ch.  204;  S.  C,  9  L.  T.  R.  (X.  8.)~50l;"  >Z 
tcr:^h,i/  8.  C,  9  Jurist  (X.  8.)  483;  R.  C,  8  L  T  li  (X  8  ) 
227;  S.  C,  1  X.  R.  543;  8.  C,  11  W.  R.  525;  8.  C.,  32  L.  J. 
K.  (X.  8.)  Ch.  548;  cited,  10  Jurist  (X.  8.)  493;  lo'  L  T  r' 
(X.  8.)  00;  10  L.  T.  R.  (X.  8.)  471;  33  L.  J.  R.  (X.  S. )  Ch." 
409;  10  Jurist  (N.  S.j  504;  4  Xew  R.  182;  L.  R.  1  Eq  504. 
12  Juust  (X.  S.j  207;  35  L.  J.  R.  (X.  S.)  Ch.  355;  14  W.  r' 
303;  L.  R.  2  Ch.  313;  4  Abb.  Pr.  (X.  S.)  415;  30  How  Pr 
10;  55  I3arl).  107;  0  Abb.  Pr.  (N.  8.)  279;  10  Abb.  Pr.  (X.  8  . 
:!<!9;  45  X.  Y.  302;  01  X.  Y.  231;    4  Am.  L.  T.  R.  (X.  S.j  177. 

Ilalictt  r.  Cumston,  110  Ma.ss.  R.  29. 

Harper  I-.  Pearson,  3  L.  T.  R.  (X.  8.)  547;    cited,  4  Abb.  Pr.  (X. 
S.j  415;  30  How.  Pr.  10;  01  X.  Y.  233. 

Harrison  v.  Taylor,  12  L.  T.  R.  (X.  S.j  339;   S.  C,  11  Jurist  (X 
8.j  408;  cited,  4  Am.  L.  T.  R.  (X.  S.j  180. 

Hcatii  V.  Wright,  3  Wall.  Jr.  141. 


XXX 


Cases  Criticised. 


li 


Ilencl'Mson  v.  .Torp,  eitefl,  Lloyd  on  Tradeniiirks,  54. 

Ht'iinessy  f.  Wlioclor,  51  How.  Pr.  457;    S.  C,  rrcersed  Jy  Ct.  of 

Appeals,  not  yet  reported. 
nine  r.  Lart,  10  Jurist,  100;   cited,  7  Abb.  Pr.  203;  7  Bosw.  229; 

7  Jurist  (X.  S.)  674;    2  J.  &  II.  144;    30  L.  J.  R.  (N.  S.)  Cii. 
490;  eritiriml,  5  Am.  Law  Reg.  (N.  S.)  593. 

Hirsc'h  v.  Jonas,  45    L.  J.  R.  (N.  S.)  Cli.  304;   S.  C,  Eng.  L.  R. 

8  Ch.  Div.  584. 

Hirsoli   V.  Deuham,  L.  R.  14  Eq.  542;    S.  C,  41  L.  J.  R.  (K  S. 

Ch.  752;  S.  C,  27    L.  T.  R.  (N.  S.)  50;  cited,  L.  R.  18  Eq.  151 

22  W.  R.  455;  30  L.  T.  R.  (N.  S.)  290. 
llobbsr.  Francais,  10  How.  Pr.  507;  cited,  9  Bush,  130. 
Hogg  V,  Kirby,  8  Vcsey  Jr.  215;  cited,  2  V.  &  B.  218;  1  Hopkins 

Cii.  n.  3.-.3;  8  Paige,  70;  4  McLean,  520;  2  Abb.  Pr.  326;  4  E. 

D.  Smith,  302;   2  Jurist  (N.  S.)418;    2   Abb.  Pr.  (N.  S.)  402; 

2  Brews.  310;  17  L.  T.  R.  (N.  8.)  292;  1  Holmes,  193;  6  Ilun, 

108. 
Hogg  v.  Maxwell,  L.  R.  2  Ch.  307;  S.  C,  30  L.  J.  R.  (N.  S.)  Ch. 

433. 
Holloway  v.  Holloway,  13  Beav.  209;  cited,  2  Abb.  Pr.  328;  4  E. 

D.   Smith,  392;    criticised,  13  How.  Pr.  397;   4  Abb.  Pr.   155; 

cited,  36  How.  Pr.  39;  2  Daly,  317;  1  Hun,  373;  3  T.  &  C.  551 ; 

02  N.  Y.  433. 
Holmes  v.  Holmes,  Booth  &  Atwood  Manufacturing  Company,  37 

Conn.  278;  cited,  1  Hun,  374;  3  T.  &  C.  552;  4  Am.  Law  T.  R. 

(X.  S.)  177. 
Hookham  v.  Pottage,  L.  R.  8  Ch.  91;  S.  C,  21  W.  R.  47;  S.  C, 

27  L.  T.  R.  (N.  a.)  595;  affirming  S.  C,  20  W.  R.  720;   S.  C, 

26  L.  T.  R.  (N.  S.)  755;  cited,  61  N.  Y.  234. 
Hostetter  v.  Vowiuklc,  1  Dillon,  329. 
Hovcndoni).  Lloyd,  18  W.  R.  1132. 
Howard  v.  Henriques,  3  Sand.  725;    cited,  17  Barb.  COO;    2  Abb. 

Pr.  322;  12  Mo.  L.  R.  224;  4  Phila.  141;  7  Boaw.  230;  9  Bosw. 

199;  21  Cal.  451;  28  How.  Pr,  124;    6  Robt.  538;  4  Abb.  Pr. 

(N.  S.)  415;    30  How.  Pr.  16;    2  Brews.  310;  44  Mi.ssouri,  177; 

2  Brews.  ;}29;  24  La.  An.  99;  01  N.  Y.  233. 
Howe  V.  Howe  Machine  Company,  50  Barb.  230;  cited,  35  Cal.  75; 

44  Missouri,  177;    2  B*ews.  332;    1   Hun,  374;    3  T,  &  C.  552; 

52  How.  Pr.  173. 
Howe  V.  M'lvernan,  30  Beav.  547. 
Howe  V.  Scaring,  19  How.  Pr.  14;  S.  C,  10  Abb.  Pr.  264;  S.  C, 


Cases  Cuitu'Isi:i), 


x:::vi 


•sed  b>j  Ct.  of 

7  Bosw.  229 ; 

.  (N.  S.)  Ch. 

.,  Eng.  L.  R. 

J.  R.  (N.  S. 
I.  18  Eq.  151 

136. 

!;  1  Ilopkin-s 

?r.  326 ;  4  E. 

(N.  S.)  402; 

193;  6  Ilun, 

:.  (N.  S.)  Ch. 

?r.  326;  4  E. 
bb.  Pr.  155; 
T.  &  C.  551  ; 

Company,  37 
Law  T.  R. 

47;  S.  C, 
720;   S.  C, 


109;   2  Abb. 
30;  9  Bosw. 

4  Abb.  Pr. 

Hsoiiri,  177; 

35  Cal.  75; 
&  C.  552; 


264;  S.  C, 


f.  Bosw.  354;  cit.'rl,  28  How.  Pr.  124;  (i  Abb.  Pr.  (N.  S.)  2Tl);  55 

Barb.  107;  2  Brews.  337;   12  Abb.  Pr.  (X.  S.)  98;  01  N.  Y.  234. 
Hudson  V.  Bennett,  14  L.  T.  ]{.  (X.  S.)  098. 
Hudson  V.  Osborne,  21  L.  T.  It.  (X.  S.)  380;    S.  C,  39  L.  J.  U. 

(X.  S.)  Cli.  79;  eitcd,  01  N.  Y.  233. 
Hunt  V.  :Mauicre,  34  Beav.  157;  S.  C,  11  L.  T.  R.  (N.  S.)  409. 
In-rani  v.  Stiff,  5  Jurist  (X.  S.)  947. 
Is;ia(!s  c.  Daly.  39  N.  Y.  Superior  Ct.  R.  511. 
Isaacson  v.  Tlionipson,  20  Wecivly  R.  190. 
James   v.  James,  L.  R.  13  Eq.  421;    S.  C,  20  W.  11.  434;    S.  C, 

41  L.  J.  R.  (X.  S.)  Ch.  353;  S.  C,  20  L.  T.  R.  (X.  S.)  508. 
Joiinson  r.   Ilellely,   2  Do  G.   J.   &  S.   446;    affu-mhuj   S.  C,  ' 

Beav.  03. 
Jollie  V.  Jaqucs,  1  Blatch.  C.  C.  018;  cited,  1  llohncs,  193. 
Jurjjjensen  v.  Alexander,  24  IIow.  Pr.  209. 
Kelly  r.  llutton,  L.  R.  3   Ch.  703;  S.  C,  19  L.  T.  ft.  (X.  S.)  228; 

S.  C,  10  W.  R.  1182;    taryiiHi  decree  below,  17  I..  T.  R.  (X.  S.) 

592;   and  sec  S.  C,  20  L.  T.  R.  (X,  S.)  201;    cUid,  39  L.  J.  R. 

(X.  S.)  Ch.  58;   21  L.  T.  R.  (X.  S.)324;    18  AV.  R.  34;    18  W. 

R.  183;  21  L.  T.  R.  .(X.  S.)  547. 
Kinahan  v.  Bolton,  15    Irish  Ch.  75;    cited,  L.   R.  7  Ch.  023;    41 

L.  J.  R.  (N.    S.)  Ch.  086;    27  L.  T.   R.  (X.  S.)  223;    L.  R.  18 

E.i.  150;  22  W.  R.  455;  30  L.  T.  R.  (N.  S.)  455. 
Kinney  «.  Allen,  4  Am.  Law  Times  R.  (N.  S.)  258. 
Kinney  v.  Basch,  unreported. 
Knott  V.  Morgan,  2  Keen,  213;  cited,  8  Paige,  70;    7  Beav.  87;  3 

Sand.  Ch.  595;    11   Paige,  297;    2  Sand.  Ch.  012;    17  L.  J.  R. 

(N.  S.)  Ch.  144;   4  MeLean,  518;  2  Sand.  004;    13  Ir.  Eq.  490; 

7  Cush.  333;    2  Abb.  Pr.  324;  4  E.  D.  Smith,  391;   4  Abb.  Pr. 

159;    4  Phila.  141;    7  Bosw.  225;    12  Abb.  Pr.  188;    21   How. 

Pr.  103;    1  H.  &  M.  201;    11  W.  R.  1002;    1   H.  &  M.  450,    2 

Abb.  Pr.    (X.  S.J  402;   49  Barb.  595;    35  Cal.  82;    4  Abb.  Pr. 

(X.  S.)  415;  30  How.  Pr.  10;  2  Brews.  310;   44  Missouri,  177; 

2  Brews.  328;  12  Abb.  Pr.  (X.  S.)  99;  L.  R.  17  Eq.  41. 
Laird  v.  Wilder,  9  Bush,  131. 
Lawson  v.  The  Bank  of  London,  18  Com.   Bench,   84;   cited,  10 

Jurist   (X.  S.)  494;   10  L.  T.  R.  (N.  S.)    00;    L.  R.  2  Ch.  313: 

L.  R.  17  Eq.  39. 
Lazenby  v.  White,  19  W.  R.   291;    S.  C,  L.  R.  0  Ch.  89;    cited 

40  L.  J.  R.  (X.  S.)  Ch.  570. 
Lazenby  c.  White,  41  L.  J.  R.  (X.  S.)  Ch.  354. 


y 


"I 


XX  xu 


Cases  Cpjticised. 


L<'ii  >\  Wolf,  ir,  Abb.  Pr.  (N.  S.)  1;  S.  C,  1  T.  &  C.  G2C;  S.  C, 
4G  How.  Pr.  b-7;  mo,t!f;/i>,;/ H.  ('.,  l:]  Abb.  Pr.  (N.  S. )  :)89. 

hc'iitlior  Cloth  Company  (Limited)  r.  American  Cloth  Company 
(Limited),  3:3  L.  J.  P..  (N.  S.)  Ch.  199;  S.  C,  12  W.  H.  2S9 ; 
8.  C,  9  L.  T.  R.  (N.  S.)  558;  S.  C,  10  Jurist  (X.  S.)  81 ;  (/<_ 
iY/-«/;/i/  S.  C,  11  W.  11.  9:^1  ;  S.  C,  1  H.  &  .\L  271;  S.  C.,  152  L. 
J.  K.  (N.  S.)  Ch.  721;  S.  C,  8  L.  T.  R.  (N.  S.)  829);  <•/'«/.  10 
Jurist  (X.  S.)  494;  10  L.  '!'.  R.  (X.  S.)  60;  10  L.  T.  H.  (N.  S.) 
471;  ;]:!  L.  J.  R.  (X.  S.)  Ch.  409;  10  Jurist  fX.  S.)  504;  4 
XewR.  182;  2Cin.  321;  nffinncJ,  11  .Jurist  (X.  S.)5i:J;  8.  C, 
35  L.  J.  R.  (X.  8.)  Ch.  53;  S.  C,  13  W.  R.  873;  S.  C,  12  L. 
L.  T.  R.  (X.  S.)  742;  S.  C,  11  11.  of  L.  Cas.  523;  S.  C,  G  Xew 
R.  209;  (itnrmalion  cited,  2  Dr.  it  Sm.  479;  0  Xew  R.  303;  11 
Jurist  (X.  S.)  904;  13  L.  T.  R.  (X.  S.)  13;  L.  R.  1  Ch.  198; 
12  Jurist  (X.  S.)  217;  14  W.  R.  359;  14  L.  T.  R.  (X.  S.)  310; 
3G  L.  J.  R.  (X.  S.)  Ch.  229;  30  L.  J.  R.  (X.  S.)  Ch.  505;  60 
Pcnn.  100;  17  Weekly  R.  1080;  L.  R.  8  Eq.  052;  18  W.  R. 
505;  22  L.  T.  R.  (X.  S.)  202;  L.  R.  7  Ch.  025;  41  L.  J.  R.  (X. 
S.)  Ch.  092;  27  L.  T.  R.  (X.  8.)  225;  L.  R.  18  Eq.  151;  22  W. 
K.  455;  30  L.  T.  R.  (X.  S.)  269;  61  X.  Y.  231;  cnticintd  m  to 
vse  of  word  ''patent,''  40  L.  J.  R.  (X.  S.)  Ch.  207. 

Leather  Cloth  Company  (Limited)  v.  Ilirschfeld,  1  N.  R.  551; 
cited,  1  n.  &  M.  271. 

Leather  Cloth  Company  (Limited)  v.  Hirschfeld,  1  II.  &  51.  295 ; 
S.  C,  11  W.  R.  933;  S.  C,  tt/ter  13  L.  T.  R.  (X.  S.)  427;  S. 
C,  L.  R.  1  Eq.  299. 

Lee  V.  Haley,  39  L.  J.  R.  (X.  S.)  Ch.  284;  S.  C,  22  L.  T.  R.  (X. 
S.)  251;  S.  C,  18  W.  R.  242;  S.  C,  L.  R.  5  Ch.  155;  aj)irmii,g 
S.  C,  21  L.  T.  R.  (X.  S.)  546;  S.  C,  18  W.  R.  181;  cited,  10 
Abb.  Pr.  (X.  S.)  365;  45  N.  Y.  299;  51  N.  Y.  195;  L.  R.  17 
Eq.  40;  49  How.  Pr.  8. 

Lee  ».  Haley,  31  L.  T.  R.  (X.  S.)  540;  S.  C,  18  W.  R.  181; 
affirmed,  39  L.  J.  R.  (X.  S.)  Ch.  284;  S.  C,  22  L.  T.  R.  (X.  S.) 
251;  S.  C,  18  W.  R.  242;  S.  C,  L.  R.  5  Ch.  155;  cited,  18  W. 
R.  564;  22  L.  T.  R.  (X.  S.)  261. 

Lemoine  v,  Gauton,  2  E.  D.  Smith,  343 ;  cited,  2  Abb.  Pr.  (X.  S. ) 
402. 

Lewis  V.  Langdon,  7  Sim.  421;  cited,  7  Abl).  Pr.  203;  dinnented 
from,  10  Abb.  Pr.  209;  19  How.  Pr.  17;  0  Bosw.  303;  cited,  3 
Allen,  78;  criticised,  5  Am.  Law  Reg.  (X.  S.)  592;  cited,  2 
Brews.  332. 


i 


1 


i 


Casks  Cimticised. 


XXX 11! 


I.iibi'X'.^  Extrurt  of  ^Icat   Company  (Limited)  v.  Ilanbury,  17  L. 

T.  U.  (\.  S.)  298. 
Lockwooil  r.  Hostwlok,  2  Daly,  521. 
London   and   Provinr-ial  Law  Assurance   Society  (".  London   and 

Provincial  .loint  Stocic  Life  Insurance  Company,  11  Jurist,  9o8; 

8.  C.,  i:  L.  J.  R.  (N.  S.)  Ch.  37. 
Lord  Byron  r.  Johnston,  2  Mer.  29;   cited,  12  Jurist,  149;    17  L. 

J.  I?.\x.  S.)  Ch.  144. 
Low  )•.  Hail.  47  N.  Y.  104. 

Lowell  Manufacturing  Company  v.  Lamed,  unrepm'ted. 
McAndrew  v.  Bassett,  10  Jurist  (N.  S.)  350;   S.  C,  33  L.  J.  11. 

(N.  S.)  Ch.  501;   S.  C,  12  W.  R.  777;    S.  C,  10  L.  T.  R.  (N. 

S.)  442;   affirmiHii  »•  C.,  10  Jurist  (X.  S.)402;   S.  C,  10  L.  T. 

R.  (X.  S.)'05;    cited,  L.  R.  2  Ch.  314;    4  Abh.  Pr.  (X.  S.)  415; 

KO   How.  Pr.  10;    13  Wallace,  320;   L.  R.  17  Eq.  30;    2?  L.  T. 

R.  rX.  S.)  395;  42  L.  J.  R.  (X.  S.)  Cl».  137;  43  L.  J.  R.  (N.  S. ) 

Ch.  05;  29  L.  T.  R.  (N.  S.)  449;  22  W.  R.  54. 
McCardel  v.  Peck,  28  How.  Pr.  120;  cited.  4  Abb.  Pr.  (N.  S.)  50; 

7  Robt.  347;  G  Abb.  Pr.  (N.  S.)279;  55  Barb.  167;  4  Am.  Law 

T.  R.  (X.  S.)  182. 
^McCartney  v.  Garnhart,  45  Missouri  (4  Post)  593. 
McGowan  Bros.  Pump  and  Machine  Co.  v.  McGowan,  2  Cin.  313. 
Marsh   v.  Billings,  7  Cush.  322;    cited,  0  Robt.  538;    4  Abb.  Pr, 

(X.  S.)  415;    30  How.  Pr,  10;  2  Brews.  310;  44  Missouri,  177; 

2  Brews.  329;  01  X.  Y.  233. 
Marsh  i\  Warren,  4  Am.  L.  T.  R.  (N.  S.)  126. 
3Iarshall  v.  Ross,  17  Weekly  R.  1080;    S.  C,  21  L.  T.  R,  (X.  S.) 

200;    S.   C,  L.  R.  8  Eq.'651 ;    S.  C,  39  L.  J.  R.  (N.   S.)  Ch. 


Matsell  ».  Flanagan,  2  Abb,  Pr.  (X.  S.)  459;   cited,  4  Abb.  Pr, 

(X.   S.)  415;    36  How.  Pr.  10;    11   Abb.   Pr.  (X.  S,)  187;    61 

Barb.  430;  15  Abb.  Pr.  (X.  S.)  4;  1  T.  &  C.  629;  46  How.  Pr, 

159;  49  How.  Pr.  9;  51  How.  Pr.  403, 
Maxwell  v.  Hogg,  L.  R.  2  Ch.  307;  S.  C,  30  L.  J.  R.  (X.  S.)  Ch. 

433;  cited,  L.  R.  7  Eq.  493;  18  W.  R.  34. 
Lire  Meikle's  Trademark,  24  W.  R.  1067;  S.  C,  46  L.  J.  R.  (X, 

S.)  Ch.  17. 
Meneely  v.  Meneely,  1  Hun,  367;    8,  C,  3  T.  &  C.  540;    S,    C, 

nffirmed,  02  X,  Y.  427;  cited,  52  How.  Pr.  219. 
Meriden  Britannia  Company  v.  Parker,  39  Conn.  450;  cited,  63  N, 

Y,  433. 

iii 


XXXIV 


Casks  Cijiticised. 


Merrimack  Manufacturiniif  (Jompauy  i".  Ganu'r,  3  AI)t).  Pr.  "tS; 
8.  C,  4  K.  D.  Smith,  ;}87;  cital,  18  How.  Pr.  (5!);  28  1  *)\v.  Pr. 
207;  r,7  I};irl).  olJo;  a5  Cal.  59;  crlticUed,  3  IJrows.  ;513. 

MeserolL-  /•.  Tynl)er«,'.  4  Abb.  Pr.  (N.  S.)  410;  S.  C,  JJli  How.  Pr. 
14;  cited,  5  Abb.  Pr.  (N.  S.)  219;  ;{  Daly,  M;  11  Abb.  Pr.  (N. 
S.)  187;  01  Barb.  430;  15  Abb.  Pr.  f'A.  S.)  4;  1  T.  &  C.  029; 
40  How.  Pr.  159:  49  How.  Pr.  9. 

Millin-^ton  v.  Fo.x,  ;}  Mylne  &  C.  338;  cite<l  4  7.1.  &  G.  383;  11 
L.  J.  R.  (N.  S.)  C.  P.  309;  0  Beav.  73;  3  Sand.  Ch.  595;  11 
Paige,  297;  3  Sand.  Ch.  013;  10  Jurist,  20;  4  McLean,  518;  2 
Sand.  013;  2  R.  I.  570;  18  Jurist,  9;  23  Eng.  L.  &  Eq.  54;  4 
Abb.  Pr.  147;  13  How.  Pr.  388;  4  K.  &  J.  751 ;  30  Beav.  248; 
28  L.  J.  R.  (N.  S.)  Ch.  350;  1  Gif.  100;  5  Jurist,  N.  S.  594;  7 
Bosw.  228 ;  3  El.  &  E.  547 ;  3  L.  T.  R.  (N.  S.)  094 ;  9  W.  R.  415 ; 
30  L.  J.  R.  (N.  S.)  Q.  B.  140;  7  Jurist.  N.  S.  897;  12  Abb.  Pr. 
338;  12  Abb.  Pr.  188;  21  How.  Pr.  103;  31  Beav.  398;  8  Jurist 
(N.  S.)  184;  11  W.  R.  933;  1  H.  &  M.  387;  8  L.  T.  R.  (N.  S.) 
830;  15  Irish  Ch.  80;  13  W.  R.  323;  10  Jurist  (N.  S.)  57;  33 
L.  J.  R.  (N.  S.)  Ch.  300;  33  L.  J.  R.  (N.  S. )  Ch.  300;  13  W 
R.  289;  9  L.  T.  R.  (N.  S.)  559;  10  Jurist  (N.  S.)  81;  5  Phila. 
405;  10  Jurist,  (N.  S.)  494;  10  L.  T.  R.  (X.  S.)  GO;  33  Beav. 
581;  L.  I{.  1  Eq.  524;  13  Jurist  (N.  8.)  207;  35  L.  J.  R.  (X.  S.) 
Ch.  355;  14  W.  R.  303;  49  Barb.  590;  30  How.  Pr.  ;;0;  2  Daly, 
315;  5  Abb.  Pr.  (N.  S.)  320;  0  Abb.  Pr.  (X.  S.)  279;  55  Barb. 
107;  3  Daly,  54;  31  L.  T.  R.  (X.  S  )  480;  18  W.  R.  183;  21  L. 
T.  R.  (X.  S.)  547;  33  Md.  308;  37  Conn.  295;  3  Brews.  328;  33 
L.  T.  R.  (X.  S.)  444;  1  Dillon,  333;  1  Wilson,  03;  13  Abb.  Pr. 
(N.  S.)  99;  L.  R.  7  Ch.  033;  41  L.  J.  R.  (X.  S.)  (Mi.  080;  37  L. 
T.  R.  (N.  S.)  223;  45  L.  J.  R.  (X.  S. )  Ch.  498;  24  W.  R.  1028; 
84  L.  T.  R.  (N.  S.)  805;  4  Am.  L.  T.  R.  (X.  S.)  178. 

Meet  V.  Couston,  10  L.  T.  R.  (N.  S.)  395;  S.  C,  33  Beav.  578. 

Moorman  v.  Hoge.  2  Sawyer,  78. 

Morgan  v.  .Al'Adam,  30  L.  J.  R.  (N.  S.)  Ch.  228. 

Morrison  v.  Case,  9  Blatch.  C.  C.  548;  cited,  10  Blatch.  0.  C.  105. 

Morrison  v.  ]\Ioat,  9  Hare,  241. 

Morrison  r.  Salmon,  2  M.  &  G.  385;  cited,  13  Ir.  Eq.  487;  7  Cush. 
333;  5  Am.  Law  Reg.  (X.  S.)  594;  2  Brews.  327. 

Morse  v.  Cornwell,  umrported. 

Morse  v.  Hall,  109  ilass.  409. 

Motley  r.  Downman,  3  Mylne  &  C.  1 ;  S.  C,  0  L.  J.  R.  (X.  S.)  Ch. 
308;  cited,  0  Hare,  331  ;  3  Sand.  019;    13  Ir.  Eq.  487;   2  Abb. 


Cases  CitrrrcrsED. 


XXXV 


Pr.  324;  4  K.  D.  Smitli,  1500;  4  Abb.  Pr.  8!);  1:5  IIow.  Pr.  344; 

24  Barb.  10.-);   2S  L.  J.  11.  (N.  S. )  Cli.  CO;  18  How.  Pr.  69;  1 

N.  R.  545;  !)  Jurist  (N.  S.)  48.-);  8  L.  T.  11.  (X.  S.)  221);  :52  L. 

J.  R.  (N.  S.)  Cli.  5.52;   11  W.  R.  527;  33  L.  J.  R.  (N.  8.)  747; 

8  L.  T.  R.  (N.   S.)  850;    15  Irish  Cli.  80;    13  W.  R.  ;]24 ;    10 

.Jurist  (N.  S.)  57;  33  L.  J.  R.  (N.  S.)  Cb.  207;  57  Baib.  531;  1 

Dillon.  332. 
Ncwby  ('.    ilio  Oro^ron    Central    R.    Co.,    Deady.  (309;    cited,   4 

Xm.  Law  T.  R.  (N.  S.)  177. 
Newman  r.  Alvonl,  49  Barb.  588;    nffinn'w<j  S.  C,  35  IIow.  Pr. 

108;  ciUd,  35  Cal.  75;  4  Abb.  Pr.  (N.  S. )  415;  30  How.  Pr.  10; 

5  Abb.  Pr.  (N.  S.)  219;  44  Missouri,  177;  3  Daly,  53;  11  Abb. 

Pr.  (N.  S.)  187;  Gl  Barb.  430;  45  N.  Y.  298;  10  Abb.  Pr.  (N. 

S.)  3G5;   13  Wallace,  325;  40  How.  Pr.  1.59;  1  T.  &  C.  029;  15 

Abb.  Pr.  (N.  S. )  4;  49  How.  Pr.  9;  affirmed,  51  N.  Y.  189;  13 

Abb.  Pr.  (N.  S.)  391. 
Oldliani  u.  Jones.  13  Irish  Cli.  393. 
Orr  i\  Diaper.  40  L.  J.  R.  (N.  S. )  Cli.  41. 
Osgood  v.  Allen,  1  II;)lnies,  185;  S.  C,  0  Am.  L.  T.  R.  20. 
Osgood  V.  Rock  wood,  11  Blat<:h.  C.  C.  310. 
Palmer  r.  Harris,  00  Penn.  St.  150;  3  Brews.  330. 
Partridge  v.  .Menek,  2  Sand.  Ch.  023;  S.  C,  ajfinncd,  2  Barb.  Ch. 

101;    S.  C,  iiffinnid,  1   How.  App.   Cases,   547;    ctt(d,  3   Sand. 

619;  17  Barb.'o09;  3  Abb.  Pr.  324;  4  E.  D.  Smith,  390;  4  Abb. 

Pr.  89;    13   How.  Pr.  344;   24  Barb.  105;    4  Abb.  Pr.   155;   4 

Abb.  Pr.  157;    23  Barlj.  009;    13  Mo.  L.  R.  224;   18  How.  Pr. 

69;   4  Phila.  140;   7  Bosw.  228;  9  Bosw.  199;  33  L.  J.  R.  (N. 

S.)  Ch.  199;  4  Robt.  013;  3  Abb.  Pr.  (N.   S.)  403;   1  Abb.  Ct. 

of  App.  Dec.  370;  5  Abb.  Pr.  (N.  S.)  317;  3  Trans.  App.  109; 

3  Kcyes,  590;  49  Barb.  590;  35  Cal.  05;  2  Brews.  300;  7  Phila. 

39;  criticised,  3  Brews.  311;  cited,  Ai  ilissouri,  178;  3  IMich.  N. 

P.  134;  Deady,  010;  3  Brews.  330;  61  N.  Y.  23;);  49  IIow.  Pr. 

7;  Ollun,  108. 
Partridge  v.  ilenek,  1  IIow.  App.  Cas.  547;  cited,  4  Abb.  Pr.  155; 

13  IIow.  Pr.  397;  4  Abb.  Pr.  157;  19  IIow.  Pr.  570;  12  Weekly 

R.  289;  9  L.  T.  R.  (N.  S.)  559;   10  Jurist  ^^  S.  81 ;  5  Am.  Law 

Reg.  (X.  S.)  597;  57  Barb.  533;  3  Brews.  330;  13  Abb.  Pr.  (N. 

S.)  399;  .50  N.  Y.  123;  01  N.  Y.  331. 
Peltz  V.  Eichele,  02  Missouri,  171. 
Perry  v.  Truelitt,  0  Beav.  66;  cited,  7  Beav.  87;  6  Hare,  331;    17, 

L.  J.  R.  (N.  S.)  Ch.  144;  3  Sand.  613;    13  Ir.  Eq.  488;  lOEng. 


"""%" 


XXXVl 


Casks  Ciuticised. 


L.  &  V.i\.  IT:  10  Ihirc,  JT'i-  17  .lurisl.  IKiO;  2  Al>b.  Pr.  324:  4 
K.  I).  Smiiii.  M  ;  1  Al.:  .  I'r.  l."..".;  1;;  How.  I'r.  -.iHH;  4  Al.lt. 
Hr.  l.*,7;  ;j  .Iiiiot  (N.  S. )  iCiO;  :!  K.  iV:  .).  4v!!»;  \2  .M«>.  L.  U.  '^04; 
IS  How.  Pr.  (SS;  i  15o-,\v.  •,'•,'•:;  \-^  Al)i).  Pr.  •J;!!t;  !)  Hosw.  ll)i»:  !» 
Jurist  (X.  S. )  :iO:{;  11  W.  H.  il.itj ;  1  II.  Si  M.  2,s:»;  ii'J  L.  .1.  P. 
(\.  S.)  Ch.  T-.'.V.  H  1..  T.  P.  (N.  S.)  S:i'';  ;i:i  P.  .1.  P.  l.\.  S. ) 
Ch.  200;  13  W.  P.  2S!);  ((  L.  T.  P.  ( N.  !S. )  5.VJ;  10  .lurist  (N.  S. ) 
81;  5  Pliiiii.  4(m;  28  How.  Pr.  207;  11  .lurist  (\.  «.)  r)17;  :!.". 
L.  J.  P.  (N.  S.)  Ch.  02;  P!  W.  P  870;  12  L.  T.  P.  (N.  S. ) 
740;  11  11.  of  L.  Oils.  5;i8;  2  Dr.  k  Sm.  41!»;  11  Jurist  (N.  S.  i 
1)04;  P)  L.  T.  P.  (N.  S.)  Pp  5  Am.  Law  Pej,'.  (N.  S.)  .")!>7;  :;0 
L.  J.  P.  (X.  S.)  Ch.  220;  4!l  Barb.  .jJtO;  57  Purb.  o;].-);  ',  Ablj. 
Pr.  (X.  S.)  220;  44  Mi.ssouri,  177;  .!  Daly.  .'■)4 ;  IS  W.  P.  1S;5; 
21  P.  T.  P.  (X.  S.)  .■)47;  22  L.  T.  U.  (X.  S.)  202;  2  Prews.  ;];M  ; 
54  PI.  400;  P.  P.  7  Ch.  02.". ;  41  L.  ',.  P.  (N.  S.)  Ch.  087;  27 
L.  T.  R.  (N.  S.)  225;  3  T.  &  C.  552;  59  N.  Y.  335;  01  X.  Y. 
331;  0  IPin,  108;  45  P.  J.  P.  <X.  S. )  Ch.  502;  24  W.  P.  1030; 
34  L.  T.  P.  (X.  S.)  808 

Peterson  v.  lluuipluey,  4  Abb.  Pr.  3»4;  cilcd,  28  How.  Pr.  124;  2 
Brews.  312;  critivUal  and  dmijiproccd,  12  Abb.  Pr.  (X.  S.)  99; 
cit^'d,  01  X.  Y.  23:5. 

Phalon  c.  AVright,  5  Phila.  404. 

Phelan  r.  Collenaer,  0  Hun,  244. 

Piddinj^  v.  Howe,  8  Sim.  477;  cited,  0  Bcav.  70;  7  Ponn.  L.  J. 
180;    19  Eng.  L,  &  Eq.  17;    10  Pare   472;    17  Juri.st,  309;   4 


Abb.  Pr.  154;    13   How.  Pr.  390;  4  Abb.  Pr.  157 


Abb.  Pr. 


203;  12  Mo.  L.  P.  222;  12  Abb.  Pr.  239;  9  Bosw.  197;  11  W. 

P.  932;  1  II.  &  M.  287;  32  L.  J.  P.  (X.  S.)  Ch.  725;  8  L.  T.  P. 

(N.  S.)  830;  5  Phila.  408;    11  Jurist  (X.  S.)  510;    35  P.  J.  P. 

(N.  S.)  Ch.  04;  13  W.  P.  077;  10  L.  T.  P..  (N.  S.)  740;  5  Am. 

Law  Reg.  (X.   S.)  597;    30  L.  J.  Tl.  (N.  S.)  Ch.  229;  49  J5arb. 

590;  4  Abb.  Pr.  (N.  S.)  415;   30  How.  Pr.  10;   00  Penn.  100; 

L.  P.  7  Ch.  025;  41  L.  J.  R.  (X.  S.)  Ch.  087;  £7  L.  T.  P.  (.N. 

S.)  225;  9  Bush,  130. 
Pierce  v.  Fnailvs,  10  Jurist  25;  cited,  7  Bosw.  230. 
Ponsardin  c.  Peto.  10  Jurist,   0;    S.  C,  12  VV.  R.  198;  S.  C,  33 

Beuv.  042;  S.  C,  33  L.  J.  P.  (X.  S.)  Ch.  371. 
Popham   V.  Wilcox,  38  N.  Y.  Superior  Gt.  R.  374;   sec  S.  C,  14 

Abb.  Pr.  (X.  S.)  200. 
Prince  Metallic  Paint  Company  v.  Carbon  Metallic  Paint  Com- 
pany, unreported. 


* 


Casks  Cuiticised. 


xxxvii 


■^ 


I 


Prowott  V.  Mortimer,  3  Jurist,  N.  S.  414. 

Purser  r.  Brain,  17  L.  J.  H.  (X.  S. )  Cli.  14'. 

Radde  r.  Norman,  41  L.  J.  U.  (X.  S.)  Cli.  rtin..    S.  C,  20  W.  H. 

7<i0;  S.  C,  20  L.  T.  U.  (N.  S.)  788;  L.  U.  14  E(i.  ;J48. 
Ruf,'ifett  V.  Findlater,  L.  II.  17  E(|.  2!);  S.  C,  43  L.  J.  H.  (N.  S.) 

Ch.   04;    S.   C,  29  L.  T.  R.   (X.   S.)  448;  S.   C,   23  W.  R. 

53. 
Ransom  v.  Bcntall,  3  Law  J.  R.  (X.  S.)  Cli.  101 ;   cited,  3  Sand. 

Cii.  504;  11  Paige,  398;  2  Brews.  328. 
Reeves  v.  Denicke,  13  Abb.  Pr.  (N.  S.)  93. 
Reg.  V.  Closs,  Dearsiey  &  B.  4G0. 
Reg.  V.  Duiidns,  0  Co.\  C.  C.  380. 
Reg.  c.  Sinitii,  Dearsiey  &  B.  500;   S.  C,  27  L.  J.  R.  (N.  S.)  M. 

C.  225. 
The  Hepulilie  of  Peru  v.  Pieeves,  40  X.  Y.  Superior  it.  R.  310. 
Rillett  c.  earlier,  11  Abb.  Pr.  (X.  S.)  180;    S.  C,  01  Barl).  435; 

cilri/,  4!)  llo-.v.  Pr.  9. 
Rieliards  c.  Williamson,  30  L.  T.  R.  (X.  S.)  740;  S.  C,  23  W.  R. 

705. 
Rodgers  v.  Nowill,  11  Jiiri'^t,  1037;  9.  C,  5  Com.  B.  (Man.  (}.  & 

S.)  109;  S.  C,  17  L.  .1.  R.  ^X.  S.)  C.  P.  52;  S.  C,  0  Hare,  325; 

cited,  7  Cush.  333;   2  Abb.  Pr.  322;   7  W.  R.  300;    9  L.  T.  R. 

(N.  S.)  200;  33  Md.  202;  3  Brews.  338;  3  Brews.  349;  4  Brews. 

47;  24  La.  An.  100;  3  T.  &  C.  551 ;  02  N.  Y.  432. 
Rodgers  v.  Xowill,  17  Eng.  L.  &  Eq.  83;  S.  C,  17  .Jurist,  109;  S. 

C,  recei-ml,  22  L.  J.  R.  (N.  S.)  Cli.  404. 
Rodgers  v.  Rodgers,  22  W.  R.  887;    S.  C,  31   L.  T.  R.  (N.   S.) 

285. 

Rogers  v.    Taintor,    97  Mass.   291;    cittd,   110   Id.   31;    111   Id. 

344. 
Routh  V.  Webster.  10  Beav.  501;   cited,  17  L.  J.  R.  (N.  S.)  Ch. 

144;  L.  R.  7  Eq.  493. 
Rowley  ».  Houghton,  3  Brewster,  303;  S.  C,  7  Phila.  39. 
Rudderow  v.  Huntington,  3  Sand.  352. 
Samuel  i:  Berger,  4  Abl).  Pr.  88;  S.  C,  24  Barb.  103;  S.  C,  13 

How.  Pr.  342 ;  cited,  2  Brews.  337. 
Sehweitzer  v.  Atkins,  37  L.  ,L  R.  (X.  S.)  Ch.  847;  S.  C,  19  L.  T. 

R.  (X.  S.)  0;  cited,  3  T.  &  C.  552. 
Scott  V.  Rowland,  20  L.  T.  R.  (X.  S.)  391;  S.  C,  20  W.  R.  508. 
Scott  V.  Scott,  10  L.  T.  R.  (X.  S.)  143. 
ocovillc  V.  Tolund,  G  Western  Law  Journal,  84. 


Ir 


,«: 


M 


XXXVlll 


Cases  Cuiticised. 


Scabury  r.  Grosvcnor.  innrjnn'ted. 

Sedon  r.  Senate,  Ecleii  on  Injunctions,  1st  Am.  Ed.  22G;  cited,  2 

V.  &  B.  2;'.(). 
Sei.xo  T.  Piovezendc,  L.  K.    1  Cli.  l!)2;    S.   ('.,  13  Jurist  (X.  8.) 

215;  8.  C,  14  W.  \\.  :5r,r;  S.  C  11  L.  T.  R.  (N.  S.)  :)14;  cited, 

3o  C:.l.  70;  03  Md.  202;  18  W.  K.  OG.J;   1  Dillon,  ;]:)2;  1  Wil- 

8on,  03;   45  N.  Y.  298;  10  Abb.  Pr.  (N.   8.)  305;   13  AVallacc, 

327;   L.  R.  5  E.  &  I.  App.  521;   27  L.  T.  R.  (N.   S.)  31)0;   42 

L.  J.  R.   (X.  S.)  Cli.  138;    51  N.  Y.  11)4;  L.  R.  17  Eq.  38;   L. 

R.  18  Eq.  148;  22  W.  R.  455;  30  L.  T.  R.  (N.  S.)  295. 
Seltzer  v.  Powell,  8  Pliila.  290. 
Sherwood  v.   Andrews,  5  Am.   Law  Reg.  (N.  S.)  588;    citeds  57 

]]arb.  5^2. 
Sliii)wri<;lit  r.  Clements,  10  W.  R.  599. 
Shrinipton  v.  Laijj;lit,  18  Heav.  104. 
TUe  Sinj;er  ^lanul'acturing  C-"()mj)any  t.  Kimball,  10  Scottish  L.  R. 

173;    S.  C,  45  Scottish  Jurist,   201;   disapproved,  45  L.  J.  R. 

(N.  S.)  Ch.  499. 
The  Singer  ^Manufacturing  Com])any  v.  Wilson,  24  W.  R.  1023; 

S.  C,  45  L.  J.  R.  (X.   S.)  Oh.  490;  S.  C,  34  L.  T.  R.  (X.  S.) 

858;  distiiiriiiiHhed,  40  L.  J.  R.  (X.  S.)  Ch.  208. 
Singleton  «.  Bolton,  3  Doug.  293;  cited,  4  jMcLean,  518;  2  Sand. 

Oil;  2  Abb.  Pr.  320;  4  E.  D.  Smith,  392;  4  Abb.  Pr.  147;  13 

How.  Pr.  388;  18  How.  Pr.  08;  7  Bosw.  225;  12  Abb.  Pr.  239; 

5  Phila.  405;  28  How.  Pr.  207;  5  Am.  Law  Keg-.  (X.  S.)  591; 

47  Barb.  483;  49  Barb.  590;  57  Barb.  535;  5  Abb.  Pr.  (X.  S.) 

220;  3  Daly,  54;  2  Brews.  327;  54  111.  400. 
Smith  i\  Reynolds,  10  Blalch.  C.  C.  85;  S.  C.  Id.  100. 
Smith  V.  Woodruff,  48  Barb.  438;  cited,  35  Cal.  82;  4  Abb.  Pr. 

(X.  S.)415;  30  How.  Pr.  10. 
Snowd  .1  V.  Xoah,   Hopkins  Ch.   347;    cited,    8  Paige,   77;     17 

Barb.  009;  7  Bosw.  225;  2  Abb.  Pr.  (X.  S.)  402;  2  Brews.  310; 

0  Hun,  108;  51  How.  Pr.  404. 
Sohier  ».  Johnson,  111  JIass.  238. 
Sohl  V.  Geisendorf,  1  Wilson,  GO. 
Southey  t.  Sherwood,  2  IMer.  435;   cited,  17  L.  J.  R.  (X.  S.)  Ch. 

144;  30  L.  J.  R.  (X.  S.)  Ch.  232. 
Southcrne  r.  Howe,  cited,  Popham.  143 ;  2  Cro.  Jac.  471 ;  2  Rollc 

R.  28;  2  Atk.  484;    4  M.  &  G.  385;    11   L.  J.  R.  (X.  S.)  C.  P. 

308;  4  McLean,  518;    22  L.  J.  R.  (X.  S.)  Ch.  077;  3  Dc  G.  M. 

&G.  902;  17  Jurist,  203;  17EHg.  L.  &  Eq.  259;  3  K.  &  J.  428; 


Cases  Criticised. 


XXX  X 


289; 

591; 

fs.  S.) 


;    17 

310; 


lolle 
\  P. 
.  M. 

428; 


12  Mo.  L.  R.  222;  7  Bosw.  225;  9  Hosw.  197;   9  Jurist  TX.  S.) 

484;    8  L.  T.  II.  (X.  S. )  22S;    :;2  L.  J.  11.  (N.  S.)  Cli.  ooO;    11 

W.  R.  520 :  J  r.nws.  :!27 ;  27   [,.  T.  II.  (X.  S.)  57;  41  L.  J.  1{. 

(X.  S.)  C"i.  r55;  J..  H.   14  i:(|.  549. 
Soutlioni  r.  Reynolds.  12  L.  T.  U.  (X.  S.;  75. 
Spottiswoodc  ('.  (".arkc.  K)  Jurist.  1040;  rit,://,  2  Abb.  Pr.  324;  4 

E.  D.  Smith.  :;'.I0;  4  Abb.  Pr.  Kil ;  4  Philu.  141;   7  Eosw.  230; 

4  Rolit.  (il(i;  2  Brows.  310;  40  Cal.  599. 
Standiny-L'r  /•.  Standiiifrer.  19  Leg.  Int.  85. 
The  State  of  Missouri  c.  Gibbs,  50  :\Io.  133. 

Stephens  /•.  l)e  Conto,  4  Al)b.  Pr.  (X.  S.)  47;  S.  C,  7  Robt.  343. 
Ex  parte  Stephens,  24  \V.  R.  819;  S.  C,  24  W.  R.  903;  S.  C,  46 

L.  J.  R.  (X.  S.)  Ch.  40;  S.  C,  3  Eng.  L.  R.  Ch.  Div.  659. 
Stephens  r.  I'eel,  10  L.  T.  R.  (X.  S.)  145. 
Stetson  r.  Winsor,  9  Phihi.  513. 
Stevens  ;•.  Paine,  18  L.  T.  R.  (N.  S.)  COO. 
Stewart  v.  Smitiison,  1  Hilt.  119;  cited,  13  Abb.  Pr.  241;  30  How. 

Pr.  39;  2  Daly,  317. 
Stokes  r.   Landgrall,  17  Barb.  008;   cited,  13  Mo.  L.  R.  224;   18 

ilow.  Pr.  (>7;  7  Bosw.  229;  9  Bosw.  199;  5  Phihi.  405;  5  Am. 

Law  Reg.  (X.  S.)  594;  47  Barl).  403;  1  Abb.  Ct.  of  App.  Dee. 

370;  5  Abb.  Pr.  (X.  S.)  217;  3  Trans.  App.  109;  3  Keyes,  590; 

49  Barb.  591;  57  Barb.  534;    35  Cal.  04;   44  Missouri,  170;   3 

Brews.  317;   7  Pliila.  255;    2  Mich.  X.  P.  034;    54  111.  405;    6 

Laos.  100;   13  Abb.  Pr.  (X.  S.)401;   24  La.   An.   99;   45  Cal. 

481 ;  59  X.  Y.  335. 
Stone  i\  Carlan,  13  Mo.  L.  R.  300;   cited,  7  Cush.  333;    7  Bosw. 

230;  0  Robt.  538;  4  Abb.  Pr.  415;  30  How.  Pr.  10. 
Stonebreaker  v.  Stonebreaker,  33  Md.  253;  cited,  3  Brews.  333;  1 

Hun,  374 ;  3  T.  &  C.  553. 
Swift  ('.  Dey,  4  Robt.  Oil. 
Sykes  v.  Sykes,  3  B.  &  C.  541;  S.  C,  5  Dowl.  &  Ryl.  392;  cited, 

19  Pick.  210;  2  Sand.  Ch.  595;  4  McLean,  518;  13  Ir.  Eq.  480; 

18  Jurist,  9;  23  Eng.  L.  &  Eq.  54;  11  Hare,  84;  34  L.  J.  R.  (X. 

S.)  Ch.  034;  1  K.  &  J.  515;  2  K.  &  J.  128;  3  K.  &  J.  431;   28 

L.  J.  R.  (X.  S.)  Ch.   01;    7  Bosw.  225;    L.  R.  1  Eq.  302;    50 

Barb.  242;    2  Brews.  325;  18  W.  R.  943;  2  Brews.  349;  L.  R. 

7  Ch.  030;   41   L.  J.  R.  {X.  S.)  Ch.  CCC;    27  L.  T.   R.   (X.   S.) 

327;  1  Hun,  372;  3  T.  &  C.  550;  22  W.  R.  700;  02  X.  Y.  433; 

45  L.  J.  R.  (X.  S.)  Ch.  498;  34  L.  T.  R.  (N.  S.)  805. 
Tallcott  V.  Moore,  13  X.  Y.  Supreme  Ct.  (0  Hun)  100. 


I 


lii. 

i. 


xl 


Cases  Criticised. 


Taylor  v.  Carpenter,  11  Paige,  292;  S.  C,  2  Sand.  Cli.  G03;  riled, 

2  Sand.  Cli.  595;  S.  C,  ainnn&l,  2  Sand.  (Jli.  012;  cited,  2  Sand. 

Ch.  ()2.");    2  Uarb.  Cli.  101;    17  Barb.  009;   2  Abb.  Pr.  1522;    3 

niatch.  0.  C.  448;  :;;)  Barb.  009;  2  Bosw.  1;  12  Mo.  L.  W.  223; 

4  Piiilu.  141 :  7  Bosw.  230;  9  Bosw.  11)8;  47  Barb.  403;  1  Abb. 

Ct.  of  App.  Dec.  270;  5  Abb.  Pr.  (N.  S.)  217;   3  Trans.  App. 

109;  3  Keyes,  590;  49  Barb.  595;  30  How.  Pr.  30;  2  Daly,  315; 

35  Cal.  75;  Deady,  010;  13  Abb.  Pr.  (N.  S.)  401;  50  Missouri, 

134;  49  How.  Pr.  7. 
Taylor  i\  Carpenter,  3  Story,  458;  cited,  2  Sand.  Cli.  596;  4  Phlla. 

141;    7  Bosw.  230;    29  Cal.  290;   49  Barb.  590;   44  Missouri, 

175. 
Taylor  ;,'.  Carpentec.  2  Wood.  &  M.  1;    cited,  44  Missouri,  175;  1 

Dillon,   332;    50   Missou;*,    134;    4  Am.   Law  T.   R   (N.   S.) 

181. 
Taylor  r.  Gillies,  59  N.  Y.  331;  atjirming  S.  C,  5  Daly,  285. 
Taylor  >\  Taylor,  23  Eng.  L.  &  Y.(\.  281;    S.  C,  23  L.  J.  R.  (N 

S.)  Cli.  255;  cited,  49  Barb.  590;  3  T.  &  C.  552. 
Tlio'iison  )•.  Winclu'ster,  19  Pick.  214;  cited,  7  Bosw.  229;  5  Am. 

Law  Keg.  (N.  S.)  591;  54  111.  400. 
Toiige  V.  Ward,  21  L.  T.  K.  (X.  S.)  480. 

Town  r.  Stetson,  5  Abb.  Pr.  (X.  S.)  218;  affirmed,  3  Daly,  53. 
Tucker  r.  Tnrpin,  2  J.  &  IL  139;    S.  C,  30  L.  J.  R.  (N.  S.)  Ch. 

495;  S.  C,  7  .Jurist  N.  S.  073;  S.  C,  4  L.  T.  R.  (N.  S.)  037; 

cited,  11  W.  R.  740;  11  AV.  R.  933;  32  L.  .J.  R.  i.N.  S.)  Ch.  727; 

8  L.  T.  R.  (N.  S.)  831. 
The  Tuoker  .V.aninncturinf'  Company  v.  Boyington,  9  Oil.  Gaz. 

(U.  S.  Pat.  Oilieij  <t55. 
Upmann  r.  Elkan,  40  L.  J.  R.  (N.  S.)  Ch.  475;  S.  C,  L.  R.  12  Eq. 

140;  S.  C.,    19  W.   R.   807;   S.  C.,  affirmed,  20  W.  R.  131;  S. 

C,  25  L.  T.  R.  (N.  S.)  813;  S.  C,  L.' R.  7  Ch.  130;  S.  C,  41  L. 

J.  R.  (N.  S.)  Ch.  240. 
Kc  p<irte\:7.\v\\i,  33  Beav.  042;  S.  C,  10  .Jurist,  6;  S.  C,  12  W. 

R.  198;  S.  C,  33  h.  J.  R.  (N.  S.)  Ch.  371. 
Walcott  V.  Walker.  7  Vesey  .Jr.  1;  cited,  2  Mer.  439. 
Walton  >'.  Crowley,  3  lUateh.  C.  C.  440;  cital,  4  Abb.  Pr.  (X.  S.) 

415;  30  How.  Pr.  10;   1   Dillon,  33'^;    (il  X.  Y.  235;   49  How. 

Pr.  7. 
Webster  r.  Webster,  :'>  Swuiist.   490;  cited,  1  N.  R.  545;  9  Jurist 

(N.  S. )  4S5;    8    L.  T.    H.  (X.   S. )  22S;    32  L.  J.  R.  (X.  S.)  Ch. 

551;    11  W.  R.  523;    33   L.   .J.   ii.  (X-  S.J  Ch.  200;    12  W.   R. 


Casks  Ckiticiskd, 


xli 


T.IZ. 


L. 


•ist 
R. 


280; 


1)  L.  T.  R.  (X.  S.)  ."i.-,!);    10  Jurist  (N.  S.)  81  ;    2  Brows. 


Wt'cil  )'    roterson,  IC  Abl>.  Pr.  (X.  S.)  1T8. 

Welch  ?•.  Knott,  -1  K.  cV  J.  747;  cife<l,  :r.5  L.  J.  R.  (N.  S.)  Ch.  200; 

12  W.  R.  28!);  0  I..  T.  R.  (X.  S. )  .■>•-)'.);  10  Jurist  (X.  h^. )  81. 
Weston  r.  Ketchiun,  :]!)   Suiicrior  Ct.  R.    54;    scci  S.  C,  ~)\  How. 

Rr.  4r),-). 
The  Wheeler  and  Wilson  Miinuf.apturing  (Jompiin}'  v.  Shakespenr, 

30  L.  J.  R.  (X'.  ><. )  Cli.  o(>;  dlMipprocnf,  45  Seottisli  Jurist,  20(». 
Wilder  r.  Wilder,  cih<I,  2  Sawyer,  80. 
Williams  v.  Johnson,  3  Rosw.  l;^fital,  7  Bosw.  220;  25  How.  Rr. 

3G0;  2  Abb.  Rr.  ^X.  S.)  4G2;  1  Abb.  Ct.  of  App.  Dec.  270;    5 

Abb.  Rr.  (X.  S. )  217;    :3  Trans.  App.  100;    I)  Koycs,   500;    49 

Barb.  505;  ;J5  Cal.  75;    2  Brews.  320;    24  La.  An.  09;   45  Cal. 

4S1;  14  Abb.  Rr.  (X.  S.)  212;  58  X.  Y.  230;  40  How.  Rr.  10. 
Williams  r.  Osborne,  13  L.  T.  It.  N.  S.  408. 
Williams   /•.  S[)enee,  25  How.  Rr.   30G;    cited,  49  Burb.   505;    49 

How.  Rr.  10. 
Winsor  r.  Clyde.  9  Rliila.  513. 
Wolfe  p.  Barnett.  24  La.  An.  97. 
Wolfe  r.  Burke,  7  Lans.  151;  rited,  1  Hun,  375;    3  T.  &  C.  553 

reri'ruril,  5()  X.  Y.  115. 
Wolfe   r.   (4<>ular<l,  18  How.  Rr.  04;    cited.   12  Abb.   Rr.  240;    5 

Phila.  4G();    28   How.   Rr.   207;   47  Barb.  403;    1  Abb.  Ct.  of 

App.  Dee.  270;  5  Abl).  Rr.  (X.  S.)  217;   3  Trans.  App.  100;    3 

Keyes,  500;  35  How.  Rr.  113;   57  Barb.  531;    4  Abb.  Rr.  (X. 

S.)  S;  35  How.  Rr.  70;  35  Cal.  75;  5  Abb.  Pr.  (X.  S.)  220;   3 

Daly,  54;    13  Abb.  Rr.   (X.  S.)  300;   5  Am.  L.  T.  R.  01;  15 

Abb.  Rr.  (X.  S.)  2;  IT.  &  C.  028;  40  How.  Rr.  158;  40  How. 

Rr.  8. 
Woods  V.  Sands,  vinrportcd. 

Woodward  r.  La/.ar,  21  Cal.  448;  cited,  12  Abb.  Pr.  (N.  S.)  08. 
Woolam  r.  RatelifT,  1  H.  &  JL  250;   cit<d,  22  AV.  R.  450;    30  L. 

T.  R.  (X.  S.)  200. 
Wotherspoon  v.  Carrie,  18  W.  R.  502;  S.  C,  22  L.  T.  R.  (X.  S.) 

200;  cited,  2  Brews.  338;  S.  C,  rei-erml,  23  L.  T.  W.  (X.  S.)  443; 

S.  C,  18  AY.  R.  042;  verev>^al  cited,  54  Rl.  404;  S.  C,  'iffinned, 

L.  R.  5  E.  &  I.  App.  508;  S.  C,  42  L.  J.  Cli.  (X.  S.)  130;  S. 

C,  27  L.  T.  R.  (X.  S.)  303;   (ijUvmnfum  cited,  27  L.  T.  R.  (X. 

S.)  55;  41  L.  J.  R.  (X.  S.)  Ch.  750;  L.  R.  14  Eq.  553;    51  X. 

Y.  197;    15  Abb.  Pr.  (N.  S.)  4;    1   T.  &  C.   029;   40  How  Pr. 


I 


h 


xlii 


Casks  Criticised. 


If59;    L.  R.   IT  Eq.  ;]7;    45  Scottish  Jurist,  20G;  L.  R,  18  Eq. 

151;    2i  \V.  11.  455;    ;50  L.  T.  R.  (N.  S.)  390;   75  Pa.  St.  470; 

24  W.  R.  1028;  ?>i  L.  T.  R.  (N.  S.)  865. 
WothtTspoon  r.  Gray,  36  Scottish  Jurist,  24. 
Young  V.  Macrae,  9  Jurist  (N.  S.)  323;  cited,  1  H.  &  M.  454;  2  N. 

R.  572;  15  Irish  Ch.  81;  13  W.  R.  306. 


DIGEST 


OF 


TRADE:\rARK   DECISIONS.* 


n 


GEXEHAL  PPJXCIPLES  AXT)  DEFIXITIONS. 


>1  1 .  Tlio  ground  on  which  tlie  court  profocts 
rrad'-'ruarks  is,  that  it  will  not  permit  a  party  to  sell 
his  own  g'oods  as  the  goods  of  another.  A  party 
will  not  therefore  be  allowed  to  use  names,  marks, 
letters  or  other  iiidlcitB  by  which  he  may  pass  oil: 
his  own  goods  to  purchasers  as  the  manulacture  of 
{mother  person.  184:2,  Rolls  Coiirt  Perry  r.  True- 
litt.  (5  Braran,  0(5. 

g  2.  What  is  proper  to  be  done  in  trademark 
cases,  must,  more  or  less,  depend  upon  the  circum- 
stances which  attend  them.  The  court  must  deal 
with  each  case  according  to  the  irature  of  its  pecu- 
liar circumstances.  The  principle  in  these  cases  is, 
that  no  man  has  a  right  to  dress  himself  in  colors, 
oiado])tand  bear  symbols,  to  v/hichhehas  no  pecu- 
liar (  )r  excl usi  ve  right,  and  thereby  personate  anotlu >r 
[KM'son,  for  the  purpose  of  inducing  the  i)ublic  to 
suppose,  either  that  he  is  that  other  person,  or  that 
he  is  connected  with  and  selling  the  manufacture  of 
siu.'h  other  person,  while  he  is  really  selling  his  own. 
It  is  perfectly  manifest,  that  to  do  these  things  is 
to  commit  a  fraud,  and  a  very  gross  fraud,  li 
Uolls  Courts  Croft  ti.  Day,  7  Beamin^  84. 

*  The  Frouch  decisions  arc  collated  at  p.  375  et  scq. 

X  LI] 


•i^' 


1^  I 


Geneual  PuixcirLKs  AND  Blfixitioxs. 


§  ;}.  A  insm  is  iiof  to  sell  the  goods  or  mjiniifnctiu'es 
of  B  iindci-  the  .show  or  ju'eteiise  that  they  are  the 
g-oods  or  inauul'actiuvs  of  A,  who  by  superi(H'  skill 
or  industry  Jias  ('stahlishesl  the  reputation  of  his 
artichrs  in  the  market.  The  law  will  penuit  no  [)er- 
80U  to  praetiee  ii  deception  of  that  kind,  or  to  use 
th(?  means  which  contribute  to  effect  it.  lie  lias  no 
right  and  he  will  not  be  allowed,  to  use  the  names, 
letters,  marks  or  other  symbols  by  which  he  m:!y 
palm  olF  np;)n  buyers  as  the  inanufactui'es  of 
another,  t\u)  article  he  is  selling,  and  thei*eby  at- 
tract to  himself  the  patronage  that  without  such 
d'V'eptive  useot'sncli  names,  &c.,  would  haveenui'ed 
ID  ''he  benefit  of  that  other  person  who  iii'st  got  up, 
oi  was  alone  accustomed  to  use  such  names,  marks, 
letters  or  symbols.  1845,  Vice  Chancellors  a  xdfoiii), 
N.  Y.,  Coats  r.  llolbrook,  2  Sand/.  C//.  580  ;  S.  C, 
3  iT.  V.  L('(j.  Oh.s.  404. 

5^  4.  The  right  to  a  trademark  does  not  parta.lve 
of  the  nature  and  character  of  a  patent  or  copyriglit. 
1840,  Si»E\('i:n,  Senator,  JSf.  Y.  Court  of  I'lrrors^ 
Taylor  i\  Carpenter.,  2  Samlf.  Ok.  003;  S.  C,  11 
F(d<l(U  202. 

$j  0.  The  scope  or  design  of  a  bill  in  cha nee i-y  to 
restrain  the  violation  of  a  trademark  is  not  to  secure 
the  comi)lainants  against  a  fair,  honest  and.  legiti- 
mate competition  in  their  business.  Its  object 
is  to  prevent  tiie  commission  of  a  fraud,  not  only  on 
tliem,  and  to  tlie  prejudice  of  their  rights,  but  (m 
the  public,  by  the  sale  of  an  article  with  an  imita- 
tion of  their  trademark  thereon  in  such  a  manner  as 
to  deceive  purchassrs,  and  through  the  false  repre- 
sentations thus  lield  (»ut,  to  dejirive  the  owners 
thereof  of  the  proiits  of  their  skill  and  enterprise. 
1840,  LoTT,  Senator,  in  Taylor  c,  Cari)enter,  ibUL 


GI:NE1^VL   PlUXCTPLKS   AN!)   BkI- IXlTloNS.         3 


)ject 

y  <  »i^ 
t  on 

lihi- 

)re- 
ners 
•i.se. 


%  0.  The  nssuninop  to  tlic  iiKUiufacriii'tM'oi"  vendor 
thiir  he  <':iii  secure  tli(»  exc'iiisive  benelit  of  liis  trade- 
liiai'k.  is  ahvays  t(»  be  found  ani;)ii,i;  tlK^  hiu-liest  in- 
<';'nriv('s  lo  inu'eiiiiify,  laborious  exerriftii.  and  liouor- 
ableand  faitlii'al  coadiict,  and  is  one  of  llit^  .ii'realest 
securjlies  to  t!u'  public  ai^'ainst  iinx)osition.  vSi'kx- 
CKi;,  Senator,  ibUl. 

i  7.  In  suits  to  restrain  the  use  of  ti-adeinarks 
alle.ired  to  l)e  simulated  the  question  is  not  whether 
the  complainant  was  th(}  ori.i^'inal  inventor  or  pro- 
piietoi'  f)!'  the  aiti<*lemade  1)y  him,  and  u])on  whicli 
he  now  jiuts  his  trademark,  or  whether  the  article 
made  and  sold  by  the  defendants  under  the  coni- 
l)lainant\s  trademai'k  is  an  article  of  the  same 
quality  or  value.  But  the  court  proco^eds  ui>on 
the  ground  thai  the  complainant  has  a  valuable  in- 
terest in  tliefjood  will  of  Jus  trade  or  business,  and 
that  luninu,'  ajipropi'iated  to  himself  a  particular 
label,  or  siuii,  or  ti'adeniai'k.  indicating!;  to  those 
who  wish  to  ,uive  him  their  patronage  that  the  arti- 
cle is  n!anufa<'tured  or  sold  by  him,  or  by  Ids  au- 
thority, oi-  that  he  cari'ies  on  business  at  a  particu- 
lar i)lnce,  he  is  entitled  to  protection  ag-ainst  a  de- 
fendant who  attemitts  to  pirate  upon  the  good  will 
of  the  complainant's  friends  or  customei's,  or  the 
patrons  of  his  trad<^  oi'  business,  I>y  sailing  under 
liis  Hag  withoid  his  authority  or  consent.  1848,  K. 
Y.  (JiDirt  of  Appcal^y  l^artridge  v\  Menck,  2  Bdrh, 
Ch.  101  ;  S.  C,  2  Sand/,  Ck.  022;  1  IJow.  App. 
Cases,  TmS. 

§  8.  In  commercial  dealings  the  utmost  good  faith 
should  be  observed,  and  no  one  is  pernntted  to  go 
into  the  market  with  the  deception  of  labels  assim- 
ilated to  those  of  another,  so  as  to  prolit  by  the 
ingenuity,  good  faith  or  established  rejnitation  of 


^1; 


'if 


GKNEUAL   PllLNClPLKS    AM>   DlCI'IMTlOXS. 


Ilic  hUtcr.  1841),  U.  K  Clrviu!  ('our/,  fn<lhtii<f. 
C'oll'cvii  t\  linmtoii,  4  M('Lv<t)i,  r>l(». 

vj  0.  U'  llu>-  iirliclo  sold  ))y  the  (IcrciidMiU  is  iiof, 
only  <lilVor<'iit  from  (li<M'om[)l;iiii;iiit's  ai'lich',  but 
^I'ciitly  iufciior  lo  U,  lin'  AXwc^  "niist  be  To  destroy, 
ill  llio  HKirkt^i,  tli(3  v;iliu' ()!'  t!io  idnintirfs  jirticlc 
And  (liis  is  an  injury  for  vvliicb  a  coni't:  of  law  can 
nor  <A'ivo  ad('(iiial<'  convponsatjon.  However  \aliia- 
ble  ih(^  plaintiirs  inveiilioii  may  be,  yet  \i  \\  l)e  dis- 
credited by  a  woi'tldi'ss  arlicle  it  Avoiild  be  irni)ossi- 
ble,  in  any  I'easonable  time,  to  ivsloi-e  llio  jjublic 
conlid(Mice  in  the  ,uenuine  article,  lii  tliis  consists 
tin;  injury  :  ami  the  IVaud  ai'ises  I'roin  tlio  false  rep- 
resentations that  tlie  article  is  the  same.  1849,  Cof- 
feen  i\  Brunton,  ihid. 

)^  10.  Every  manufacturer  and  every  merchant  for 
Avhom  goods  are  nianul'actur(>d  lias  an  untpiestion- 
al)le  ri,ii,ht  to  distinguish  the  goods  tliat  he  manu- 
IVictures  or  sells  by  a  peculiar  mark  or  devic(s  in  or- 
d(>r  that  thev  mav  be  known  as  his  in  the  market 
lor  which  he  intends  them,  and  that  he  may  thus 
secui'o  the  prohts  that  their  superior  I'epnte,  as  Ids. 
mav  b(^  the  means  of  gaining.  His  trademark  is 
an  assui'nncc;  to  the  public  of  the  quality  of  his 
goods  and  a  pledge  of  Ids  own  integrity  in  their 
manufacture  and  sale.  To  protect  him  tliei-efoi-e  in 
the  e>:clusive  nse  of  the  mark  that  he  approprhites, 
is  not  only  the  evident  duty  of  a  court  as  an  act  of 
justice,  but  the  interests  of  the  public,  as  Avell  as 
of  the  individual,  retpiire  that  the  necessary  pro- 
tection shall  be  given.  It  is  a  mistake  to  supi)ose 
that  this  necessary  protection  can  operate  as  an  in- 
jurious restraint  upon  the  freedom  of  trade.  Its 
direct  tendency  is  to  produce  and  encourage  a  com- 
l^etition,  by  which  the  interests  of  the  i^ublic  are 


■I 


t 


GkNKIJAI.    I^IMMIIM.KS    .\M>    I); 'Vl  N  I  II' >.\;.  ,"i 


11  lis 

[)r(>- 

Dosc 

in- 

Its 

loiii- 

ave 


^•,iii<>  lo  I'i'  j)i'()iii()tf'(l  ;  :i  (MUDjM'lilioii  l!i;il  si  i!nii!;it«'s 
«'tV(»il  ;in(l  l(';iils  lo  ('xc<'ll<'iic<',  iVo.;)  I  lie  cciliiiiit  \-  ol' 
ail  a'li'-iiiPtc  ivward.  W'Ik'Ii  wf  coiisidci-  ilic  iialuii' 
of  I  !;c  \vI'<hi,<j:  I  Iia!  is  rotiiliii!  led.  wlicil  I  lie  riu'lir  (iT 
Id'opcrly  in  a,  ti'a(]<'iiiai-k  is  invaili'-l,  l!i<'  ii;  <'<'s>it y 
j'or  ihc  iiitiTpositioiior  a,  coiirl  of  ('(jiiily  h'Cdiacs 
jiKirc  ai>j)air'i)t.  Ih;  avIio  allixcs  lo  his  own  ;roo<|s 
an  iinitalioii  oC  I  In;  ori'j;-iiial  trademark,  I'y  wliicii 
fliosc  of  aiiotlxM'  art'  (lisliii^aiishcd  wnd  kiiowii. 
st'cks,  !iy  (h'cciviii,!;-  tlic  ])iil)li(',  to  iiitcrcc])!  and  di- 
veil  to  liisown  ust»  tlie  ])i'olits  to  Aviiicli  the  superior 
skill  and  ent('ri)i'ise  of  llif^  other  lind  uiveii  him  a 
prioi-  and  exclusive  titlt^  He  f//f/r(tr()j-.s\  hy  a  I'aisc 
repit'sentalion,  to  <^ire<,'t  a.  dishoiiorahle  ]>iiij)(»se. 
lie  commits  a  inu\d  upon  the  |)ul>Iie  and  ii])oa  th<' 
t)Mit'  owner  of  the  trath'mai'k.  The  ]»!irehase!'  has 
im))ose(l  ni)on  him  an  article  tliat  he  never  meant 
to  buy,  and  the  owjiei"  is  robbed  oT  the.('riii(s  of  the 
re[)iitation  t  hat  he  has  siujcessl'iilly  hi!)o!'e(l  I o  earn. 
In  such  a  <'ase  there  is  a  fraud  cou[<hMl  Avitli  a  (hiin- 
a.^e,  and  a  coiii't  of  equity,  in  refusing  to  r(\siiaiii 
the  A\j'oni:;-(h)ei'  ]>y  an  injanctio]i,  would  violate'  the 
))riiici])]es  upon  which  a  laru'e  portion  of  its  jiiiis- 
dicrion  is  iouiided,  ami  abjure  the  exfMcise  of  it-( 
most  important  Junctions,  the  sup])i'ession  of  fraud 
and  th(i  ])revention  of  a  mischief  that  ofheiwist; 
might  prove  to  be  irre])ai'able.  1849,  iV.  )'.  S///j(- 
rior  CL  »S'  T.,  Duew,  Ch,  J.,  Anioskeag  Maniifac- 
turing  Co.  o.  Spear,  *2  S'a/u?/.  ^njH'fior  CI.  r»',)S). 

5^  11 .  In  all  cases  whei-o  a  tradeniaik  is  iniitale(l 
the  essence  of  the  wrong  consists  in  the  sale  of  1ii<» 
ii'oods  of  one  mamd'acturer  or  vender  of  thos(»  of 
•anotlier  :  and  it  is  only  when  this  false  I'epi'eseida- 
tion  is  directly  or  indirectly  made,  and  only  t(^  the 
extent  in  which  it  is  made,   that  th(?  piirty  wlio  ap- 


I 


::i; 


6         GeNEIIAL  PuIXCIPLES   ASD  DEtrXITKiXS. 


.    i 


peals  to  tlic  justice  of  the  court  can  litivc  a  title  to 
ivlicl'.  184'.),  Amoskoa;:^'  Maiuiractuiiuu'  Co,  v. 
Si)t'ar,  f7t/</. 

^  \'2.  'rii*^  cn'dit  and  reiuUatiou  wliiclt  a  man  ac- 
qiiii'<^s  by  his  cai'o  or  skill  in  tin*  iiuunif;!!'!  in*'  of  a 
particular  articl(j  is  a  sp<>cics  t»t'  i)n>i)(.'i'ty  which  the 
law  recou'ui/cs  aud  ju'otects  ;  and  avIu-i'in  as  ji  monnis 
of  ext(Mnliuu'  his  reputa(i(»u  and  ^iiidiuu-  [>urclia- 
sei's.  he  allixcs  some  mark  or  sAuibol  to  (lcsii.':naU-' 
that  the  article  is  of  his  niauufactiire,  he  is  injured 
bv  the  sale  of  nn  article  uianufaciui'ed  bvan<ftlier 

t  t 

with  his  jieculiar  synilK)l  f)r  tradeniai'k  ahixi^d  to  it. 
If  the  article  is  inferior  to  his  own,  he  is  injured  in 
reputation  ;  and  even  if  it  be  of  a  similar  quality 
and  kind  its  sale  fi-oes  so  far  to  diminis-h  the  sale  ol' 
his  own  ai'ticle  and  tlius  works  u  iKxainiary  damai^'e. 
1854,  jV.  Y.  Comjiioti  Phuts,  G.  T.,  Lemoin(>  r.  Crau- 
ton,  2  E.  I).  t^uiilJt,  343. 

>j  \?y.  The  law  of  trademarks  is  of  I'ecent  origin, 
and  may  be  comprehended  in  the  i>roix>sition  that 
the  dealer  has  a  jn'operty  in  his  trademarA.  The 
ownershi]>  is  allowed  to  liim  that  he  may  have  the 
exclusive  benelit  of  the  reputaticm  which  his  skill 
has  given  to  artk'lesmade  by  him,  and  that  no  othei' 
person  may  be  able  to  sell  to  the  public,  as  his,  that 
which  is  not  his.  ia")7,  N.  Y.  Supreme  (Jt.  (J.  T., 
Clark  v.  Clark,  2o  Bavh.  7G. 

§  14.  A  x)ers(>n  who  has  ai>prop>riated  to  himself 
a  particular  label,  sign,  or  trademark,  indicating 
that  a  certain  article  is  made  or  sold  by  hiiu  or  his 
authority,  and  with  Avhich  htbel  or  tmdemark  the 
article  has  become  identified,  is  entitled  to  the  pi'o- 
tection  ol'  a  court  of  equity,  which  Avill  enjoin  any 
one  who  attempts  to  pirate  upon  the  good  will  of 
his  friends  or  customers  by  using  such  label,  sign. 


Gexkral  riiiN(  ii'lk^  an'I)  Di:rixiTFON's. 


I: 


tlio 

pl'O- 

aiiy 
II  oi" 


ortrailfMimi-k  wirlKuit  his  jiiUhoiity.  IS'U).  77/ /7.  ('L 
of  Cam.  I'/xis.  /'</..  Colhiday  i\  Biiird.  APhila.  i:'.l). 
,^  I.").  '!'li(>  i)i'o|><M'ry  which  a  iiiimiirnchiifi-  .-ic- 
(luiivs  in  ii  (I'adcinaik  by  th(^  a(h»i)fi<»ii  ol"  lliciisc 
(if  it  is  of  a  vriy  pf'ciiliar  nature.  If  imisr  be  now 
<'ou(M'(l»'(l  thai  sdiiM'  |)r(>pei'ty  exists  in  the  use  of  a 
inuleinaik.  which,  at  ]nesent,  is  sndicient  to  sup- 
port an  action  or  to  maintain  an  injunction.  It  is 
true  thiit  property  in  a  .uood  will  is  ol'  a  very  evnn- 
<'sc('nt  charactei-,  but  it  is  I'recpiently  one  of  urent 
vidue.  It  is  cleai',  IVoni  a  variety  of  <l<n'ided  <':is<>s, 
that  a  luiuinfactui-er  wlio  lias  ori,ii,'inally  stiiuiiied 
his  uoods  with  a  iKii'licular  bnind  has  a  ])i'o])erty  in 
his  mark  at  law  and  can  sustain  an  a<'tion  lor  dnni- 
aii'es  I'oi-  the  use  of  it  by  another.  It  is  also  cleiir 
that  courts  of  equity  will  restiain  the  use  of  it  )>y 
another  pei'son.  I8(;;J,  Master  of  the  IJolls,  Ilnll  r. 
IJarrows.  8  L.  T.  K.  S.  227;  8.  C,  11  ITrr/.V//  A\ 
.Vi.')  ;  S.  (;..  I)  Jnn\stX.  S.  48:5 ;  S.  C,  '.V2  Liui^ ./.  (  N. 
S.h  ell.  r)48  ;  S.  C,  1  Kern  R.  r)4:j  ;  8.  C.  on  appeal, 
1)  L.  T.  X  N.  noi,  12  ^Y^'i'kl>^  U  H22,  10  J/tr/.s-t  X. 

A.  :>:>,  :);5  /auo  ./.  (JV.  >s.),  ch.  204. 

>J  1(5.  There  was  no  evidenije  that  the  mark.  wld(di 
consisted  of  the  initials  of  a  iirm,  suirounded  by  a 
crown,  was  ever  current  or  accepted  in  the  maiket 
as  a  re[>i'esentation  of  the  persons  who  manufac- 
tured, or  of  the  xdace  of  manufacture,  or  otherwise 
than  as  a  ))i'and  of  quality  ;  there  Avas  nothinu"  to 
show  that  the  ii-on  marked  with  the  initials  ever 
had  a  leputntion  in  the  marked  Ix'canse  it  was 
believed  to  be  tlie  actual  manufacture  of  those  who 
used  the  mark.  Ileld,  that  said  mark  was  a  ti'a de- 
mark,  prox)erly  so-called,  /.  c,  a  brand  wliich  lias 
rv'putation  and  curi-ency  in  the  market  as  a  well- 
known  sign  of  quality,  andwoidd  be  protected  l)y 


Mil 


(Ikxkkal  Prj.\tii'Li;.s  axd  DEFiMxroxs. 


iniiiiictioii.       1804,    Loi'd   Ch.   WKsTr.ruv.    TT:ill  r 


1 


JMrntws, 


10./////.V/   .V.  .v.  .M  1  S.  (.'.,  ]2 


/•///  /I 


y.r/^r.A   /i'.  uV.  X.I  C/i.  '204. 

jJ  17.  Tlic  [H'inciples  appiicanjc  to  tnulomai'kcMsc'ii 
arc  shortly  ami  clraiiy  laid  down  by  Lmd  Kixos- 
i)o\v\  ill  the  case  of  tilt'  American  Cloth  Coiii[)any 
where  he  says,  ''TIh'  fiiiidaniental  ride  is  tliat  one 
man  has  no  riL;'ht  to  put  o!t'  his  ^oods  Cor  salens  the 
pxMJs  oi'a  rival  trader,  and  liecannot  therefore,  in  the 
lanuiume  of  J^ord  Laxgoali:,  in  the  case  ol"  P<Mry 
r.  'rriietitt,  'be  allowed  to  use  names,  marks,  letters 
or  other  iiK/lrid,  by  which  ht^  may  iiubice  i)iir- 
chasers  to  b(>lieve  that  the  goods  Avhicli  lie  is  selling 
are  the  maniii'actnre  of  anotlier  perse  "  The 
same  rule  would  a[)ply  to  tradesmen  not  _•  man- 
ufacturers. 180."),  Vice  Ch,  Kind'-:  us  lev,  CJlenny  /;. 
Smith,  2  Dr.  and  Sm-.  470;  S.  C,  11  Jt/ri.s-l,  xY!  K 
1)04  ;  S.  C,  18  L.  T.  li.  N.  K  11  ;  S.  C,  0  i\>/r  R.  ;}0:i 

§  18.  The  light  of  property  in  ti  tradiMiiark  is  not 
limited,  in  its  enjoynunit,  ])y  tevritoi-ial  bounds,  but 
may  be  asserted  and  maintained  Avliej'ever  the  com- 
mon  law  all'ords  ivmedies  for  wrongs,  snl)ject  only 
to  such  statutory  regulations  as  mav  inoperlv  be 
made  <'oncerning  the  use  and  enjojnient  of  other 
property.  1805,  i-^iipreme  CI.  of  CaliJ'ornia^  Dev 
linger  r.  Plate,  29  Cal.  292. 

i^  19.  A  manufacturer  lias  no  right  to  the  exclu- 
sive use  of  II  particular  colored  pjiper  or  kind  of 
XKiper,  for  covering  or  enclosing  his  goods  in  any 
particular  form.  1807,  N.  Y.  i<iipreine  Court  8. 
7\,  Faber  l\  Faber,  49  Barb.  3r)7;  S.  C,  )^  Abb.  Pr. 
iY.  X  llo. 

^  20.  The  object  or  purpose  of  the  law  in  protect- 
ing trademarks  as  property  is   twofold  :     First,  to 


•lll- 

any 

k 

Pr. 


GkNKRAL    PlIlNCIl'LKS    AND   DkII  XITIOXS.         M 

'serui'c  to  lilm  who  has  Itccii  instniau'Ulal  in  i)l•ill,^•- 
inti' into  iiinik"!  a  supci-ior  article  of  niei'claindi ..% 
the  I'lMiit  oi"  his  imUistiy  and  si^ill  ;  second,  to  [no 
irct  ill"'  coiiiniunity  I'loni  imposition,  and  Tni'idsh 
soiiic  uuaianiy  that  an  article  pnrcliascd  as  the 
iiianuractnre  of  <'n('  who  has  ap[)i'opi'iatt'd  to  his 
own  use  ;i  certain  name,  symbol  or  th'vicc^  as  a  irade- 
maili  is  u'cnnine.  Consetinently,  the  violation  oL" 
[iroperty  in  trarhMnarks  works  a  twoi'old  injnry  ; 
the  ai»[)ropriator  siiilers,  in  lailiny  to  receive  that 
remiineiatiim  I'or  Ids  hdna's  to  which  he  is  justly  en- 
titled, and  tlie  public  in  being  deceived  and  induced 
io  purchase  articles  ma(l>  by  one  man,  under  the 
belief  that  they  are  the  prijductioii  of  another. 
1808,  S/fp/-(  //?('  CL  of  Uoini.,  Boardman  c.  Meriden 
BritaniaCo.,  ;Jo  Conn.  402. 

,^  "21.  A  trach^miiik  isproi)erty,  and  the  proprie- 
tor thereof  should  be  fully  protected  in  its  enjoy- 
ment and  in  all  the  benelits  and  advantages  which 
it  confers.  1808,  X.  Y.  CL  of  Com.  Fleas,  G.  7'., 
Curtis  r.  Bryan,  '2  l>((h/,  ?A2  ;  S.  C,  IJG  How.  Pr.  '.l\i. 

i  22.  A  trademark  is  a  name,  symbol,  liguie,  let- 
ter, form  or  device,  adopted  and  used  by  a  manu- 
facturer or  merchant  to  designate  the  goods  he  man- 
ufactures or  sells  and  to  distinguish  them  i'roni  the 
goods  of  another.  1800,  PJiila.  Ct.  (f  Com.  Pleas, 
Ferguson  t\  Davol  Mills,  7  Phlla.^o?^',  S.  C,  2 
Brcwsltr,  :U4. 

;^  23.  The  right  to  the  use  of  a  trademark  is  not 
an  al)stract  right  to  wliicli  title  can  l)e  accpiired.  It 
is  only  when  sncli  use  is  attached  to  or  connected 
with  some  i)articnlar  thing  to  which  it  is  affixed  ay 
a  designation  of  individual  right  in  particnlar  prop- 
erty, tiiai  the  law  v.ill  interpose  to  restrain  its  nse  by 
another.     I  hid.     And  see  ^§  12G,  127,  148,  149,  lo2\ 


\ 


% 
■',■11  ■ 


10    Gexekal  PrjxciPLEs  AND  Befinitioxs. 


§24.  A  trademark  must  be  so  clear  ami  well  de- 
iiued  as  to  give  notice  to  others,  and  must  not  })e 
deviated  iVoiu  at  the  suggestion  of  whim  or  caprice. 
It  niiist  he  attached  to  tlie  article  manufactured,  in 
such  a  way  as  to  be  ]-easonably  durable  and  visible. 
The  mere  declaiation  of  a  person,  however  long  and 
however  extensively  i)u])]ished,  that  lie  claims 
l)roi)erty  in  a  word,  as  his  trademark,  can  not  even 
tend  to  make  it  Ids  property.  It  is  the  actual  line 
of  the  trademark,  affixed  to  the  mei-chandise  of  the 
nianufacturei",  and  this  alone,  which  can  impivrt  to 
it  the  element  of  ]»roi)erly.  ►>(>,  wliere  a  manufac- 
turer of  plows,  at  Moline,  Illinois,  claimed  as  a 
trademark  the  words  "Moline  Plow,''  wliich  he 
used  in  his  circulars,  price-lists,  and  advertisements, 
but  did  not  place  them  upon  the  articles  ma.nufac- 
tured,  it  was  Itcld^  this  recpnsite  lu'ing  absent,  he 
had  no  such  exclusive  right  to  their  use  as  would 
prevent  otiier  manufactui-ers  of  ])l(nvs  at  that  i)lace 
from  employing  them  in  the  same  mode.  ]87(>,  *SV- 
preme  Ct.  of  lUlnois,  Candee  i\  Deere,  o4  JUiiiois^ 
4139. 

vj  2,').  The  name  and  address  oC  the  manufacturer, 
coml)ined,  may  constitute  a  trademai-k  whicli  will 
entitle  him  who  adopts  it  to  protecticm  in  its  exclu- 
sive use.  but  neither  the  name  nor  the  address, 
singly,  will  be  sufficient  for  protection — both  must 
be  used.     I  hid. 

§20.  There  are  two  rules  which  are  not  to  be 
overlooked.  No  one  can  claim  luotection  fcr  the 
exclusive  use  of  a  tjademark  or  trade-name,  which 
Avoidd  practically  give  him  a  monoi)oly  in  the  sale 
of  any  goods  other  than  those  ])i'odiiced  or  made 
by  idmseir.  It  h(3  coidd,  the  public  would  be  in- 
jured rather  than  protec^ted,  for  competition  woidd 


General  Piuxciples  and  Definttioxs.     II 


i)e  destroyed.  Nor  can  a  generic  name,  or  a  name 
merely  de.scri[)tive  of  an  article  <>i"  trade,  ol"  ils 
qualities,  iiiiiiedients,  or  chaiacteristics,  be  eia- 
ploy^'d  as  a  trademark,  and  tiie  exclnsive  nse  of  it 
be  entitled  to  lepd  pi'olection.  1871,  U.  K  >^u- 
j)r<iN<'  ('/..  Delaware  &  Hudson  Canal  Conqtany  r. 
Clark,  \:i  H'r///.  ;M1. 

^27.  The  le:idin,t>- princii>le  ol'  the  law  ol"  Iriule- 
miu-k  is.  that  the  honest,  skillful,  and  industrious 
manurnciurer  or  enterpiisiiij^  luerchant  wlio  has 
produced  or  brou.u'ht  into  the  niarket  an  article  of 
use  or  coiisum[)iion,  that  has  found  I'avoi-  with  tlio 
])ublic.  and  who,  by  aflixing  to  it  M>menamc,  mark, 
device  or  symbol,  which  serves  to  distinuuish  il 
r/.v  ///.v,  and  to  distinguish  it  from  all  others,  has  fur- 
nished his  individual  guaianly  and  assurance  of 
the  quality  and  integrity  of  the  manufacture,  shall 
receive  the  iirst  reward  of  his  Inmesty,  skill,  indus- 
try or  enterprise  ;  and  shall  in  no  manner  and  to 
no  extent  be  dei)iived  of  the  sauK^  by  anothei",  who. 
to  that  end,  a})propriate8  and  api)lies  to  his  ])ro 
ductions  the  ,SY</Mr,  or  a  colorahlc.  iinlfalioii  of  I  lie. 
same  name,  ntark^  dci'ice  or  si/mh'>U  so  that  tln^ 
public  aiv.  or  mai/  h<\  deceived  or  nusletl  into  the 
purchase  o/' //W- />/v>r///r7/o//.s'  (if  tJic  oiH\  sui)posing 
them  to  be  those  of  the  oilier.  1872,  i<ii prcmc  Vi . 
of  Loinsiuiiii.  Wolfe  r.  IJarnett,  24  Jjd.  An.  1)7. 

§28.     ill  order  to  protect  a  trademark,  it  is  no! 

M'essary   that   the  i)laijitilf  should  be  eithei'   the 


m 


disco\erer  or  Iirst  nianufactuivr  of  the  article  f 


or 


wliich 


le  claims  the  mark.     1872,    Hiiprvmv  V/.   (f 


Loniyiitiiii.  Wolfe  /'.  Barneit,  ihld. 

§  2U.  The  p;inciitle  upon  which  tlie  jurisdiction 
of  a  court  of  etpiiiy  in  ii-ademark  cases  is  founded, 
is,  the  iireveuiinL';  a  pai'ty  from  Iraudulently  avail- 


*i" 


i'l 


n: 


.1- 


f|;' 


lil 


12    General  Principles  and  Definitions. 


'■'^**(» 


iiig  liiinself  of  the  tnideniaik  of  aiiotlier  wiiieli  lias 
already  o))taiiied  cuiTenoy  and  value  in  the  n)ai'ket, 
by  wliatevei-  means  he  may  devise  for  the  piii'ixjse, 
pi'ovided  the  meuns  are  devised  in  orde'i*  to  give 
him  a.  colorable  title  to  the  use  of  the  mark,  and 
pi'ovided  it  be  sh(j\vn  from  the  manner  in  whic^h  he 
has  emidoyed  those  means,  that  his  object  was, 
from  tlie  beginning,  to  invade  the  property  of  its 
owner.  Lortl  AVi:sti5UKY,  I/o/isa  of  Lorr/.s,  1872, 
^^'otherspoon  v.  Carrie,  27  Laio  Times,  N.  H.  ;}t):} ; 
S.  0.,  L'j.tc  R.,  5  En(/.  cfc  Ir.  Ap.  508;  S.  C,  42 
Law  Jonr.  (/Y.  ,S'.)  c'h.  130. 

§  30.  Pi'operty  in  the  terms,  names  and  devices 
of  trade  and  business  has  become  as  well  estab- 
lislu^d  as  property  in  any  other  matter  or  thing.  It 
is  based  ux)on  and  controlled  l)y  the  same  general 
principles  to  which  idl  i)roperty  is  subjected,  and 
iias  no  laws  special  to  itself.  The  litigation  which 
springs  from  it  is  ratlier  for  the  decision  of  facts, 
than  for  the  establishment  of  peculiar  or  unluu»wn 
princi])les.  in  a  wend,  it  is  pers(mal  pi'operty,  and 
has  ;i!l  llie  incidents  thereof.  It  is  acipiired  by  cer- 
tain exclusive  appropriathm,  continued  use,  descent 
or  XHirchase,  and  may  be  relincpiished  l)y  gift,  sale, 
or  abandoiuiient.  Its  fraudulent  appi'opriation, 
though  no  less  jeprehensil)le  in  morals  than  the 
felonious  taking  of  other  peisonal  property,  has 
not  yet  beccmie  the  sid)ject  of  investigation  and 
punishment  by  courts  having  jurisdiction  of  crime. 
It  is  this,  i)erhaps,  wliich  has  made  equity  eager  to 
arrest  the  spoliatory/r/ry/-a///e  ihiicto  by  its  swiftest 
and  sternest  authority.  1872,  CV.  of  Com.  Fleas, 
Phil.  Pa.  Winsor  t).  Clyde;  Stetson  v.  AVinsor,  9 
PhiJa.  513. 

g  31.     A  trademark  is  properly  delined  by  Upton 


General  Puixciples  and  Deftxttioxs.     13 


42 


as  the  name,  symbol,  iigiire,  letter,  form  or  device 
adopted  iind  used  }>y  ii  manufacturer  or  merchant, 
hi  order  to  designate  the  goo'is  that  he  manuiac- 
hn-es  or  sells,  and  distin<';uish  them  I'roni  those 
manufactured  or  sold  by  .mother,  to  the  end  that 
rhev  niav  be  knoAvn  in  the  market  as  his,  and  thus 
enable  hi  in  to  secure  such  proiits  as  result  iVoni  a 
rc] tula; ion  for  superior  skill,  industiy,  or  enter- 
prise It  may  be  any  sign,  mark,  syml)ol,  word,  or 
words  which  others  have  not  an  ecpial  right  to  em- 
ploy for  the  same  purpose.  1872,  Eakl,  C,  Con/- 
mi.^.slon  of  Appeals,  N.  Y.,  Newman  v.  Alvord,  iA 
N.  Y.  180. 

5j  32.  Property  in  the  use  of  a  trademai'k  has 
very  little  analogy  to  that  which  exists  in  copy 
rights  or  patents  for  inventions.  In  all  cases  where 
rights  to  the  exclusive  use  of  a  trademark  are  in- 
vaded, the  essence  of  the  wrong  consists  in  the  sale  of 
rhe  goods  of  one  manufacturer  or  vendor  as  ol'  those 
of  another.  It  is  (mly  when  this  false  representa- 
tion is  directly  or  indirectly  made,  that  a  i)ai'ty  who 
api^eals  to  a  court  of  equity  can  have  relief.  Words 
or  devices  may  be  adopted  as  trademai'lxs,  Avliich 
are  not  oiiginal  inventions  of  the  one  who  adopts 
and  uses  them.  AVoids  in  common  use  may  be 
ado]>tc(h  if,  at  the  time  of  adoption,  they  Avere  not 
used  to  desiu-nate  the  same  or  similar  articles  of 


pr 


(H 


Incti 


oil. 


A  a'enenc  name,    or  a  name  mru'e 


Iv 


descriptive  of  an  article  of  trade,  or  its  qualities, 
or  ingredients,  cannot  be  adopted  as  a  trademarlv, 
80  as  to  give  a  right  t<j  the  exclusive  use  of  it.  The 
oflice  of  a  trademark  is  to  ])oint  distinctly  to  the 
origin  oi'  ownership  of  the  article  to  which  it  is 
affixed.  Marks  wliich  only  indicate  the  names  or 
qualities  of  imxlucts,  cannot  become  th(>  subje(;ts 


A. 

ill 


14      GeXEPvAL    PllIXCIPLES    AXD   DEFINITIONS. 


of  exclusive  use,  for,  from  the  nature  of  tlie  case, 
any  otlier  producer  may  employ,  with  equal  truth 
and  the  same  right,  the  same  marks  for  like 
products.  Geographical  names,  which  point  out 
only  the  place  of  i)roduction,  cannot  be  appropri- 
ated exclusively,  so  as  to  prevent  others  from  using 
them  and  selling  articles  produced  in  the  districts 
the\' describe  under  these  appellations.  1872,  U.  S. 
Circuit  Ct.  Mc,  Shkpley,  J.,  in  Osgood  v.  Allen, 
1  Ifolmc.-i,  18.-);  S.  C,  G  Am.  L.  T.  20. 

^  5];?.  A  label,  at  common  law,  is  not  a  trade- 
mark, although  a  manufacturer  is  entitled  to  the 
exclusive  use  of  one  adopted  ])y  him  to  distinguish 
his  goods.  1878,  Siipreme  Ct.  of  Cat.,  Burke  v. 
Cassin,  4.')  Cat.  4G7. 

§  tM.  A  party  who,  while  he  has  avoided  liabil- 
ity for  the  iirtringement  of  another's  trademark, 
vet  has  adoi)ted  a  course  calculated  to  secure  a 
portion  of  the  good  will  of  the  other's  business,  will 
not  be  I'egarded  with  favor  by  a  court  of  equity. 
1874,  N.  Y.  Court  of  App.,  \Volfe  v.  Burke,  o6  N. 
Y.  115. 

§  i]t).  Every  manufacturer  has  the  unquestion- 
able I'ight  to  distinguish  the  goods  that  he  manu- 
factures and  sells  by  a  peculiar  mark  or  device,  so 
that  they  may  be  known  as  his  in  the  market,  and 
he  may  thus  secure  the  pi'ofits  which  their  superior 
reputation,  as  his,  may  be  the  means  of  gaining. 
If,  th(,^refore,  the  inventor,  or  manirfacturer  adopts 
a  label,  symbol  or  trademark,  to  distinguish  the 
article  he  thus  manufactui'es  and  sells,  no  other 
person  has  the  right  to  adopt  his  label  or  ti'ade- 
niarlv,  or  one  so  like  his  as  to  induce  the  pub- 
lic to  fuppose  the  article  to  which  it  is  aflixed  is 
the  manufacture    of    the    inventor.     This  rule  is 


m 


Gexekal  PiiixciPLEs  AND  PKFixrTroxs;.     1,"i 


6  i\^. 


ixroiiiHlod  upon  ;i  two-fold  reason  :  1.  Tluif  tlio  ])iil)- 
Vic  iiiiiv  1)(^  pi'oU'cted  Trom  being  imposed  upon  l)y 
a  spiuioiis  or  inferior  aitiole  ;  and,  2.  Tlud  the  in- 
ventor nniy  have  the  exclusive  benelit  ol'  ih(^  I'epu- 
tation  wliic'li  liis  skill  has  given  to  the  article  nuuh) 
by  him.  When  one.  tlierefore,  adopts  a  symbol  oi- 
device,  and  aflixes  it  to  the  goods  lie  thus  manufac- 
tures and  i)Uts  upon  the  market,  th(^  lau-  will  thi-ow 
its  pi'otection  around  the  trademark  thus  affixed, 
as  his  i)ro])!'rty  and  a  thing  of  value.  187'),  S//- 
pre  lite  Cl.  of  North  CaroHna,  Blackwell  r.Wriglit, 
71}  .T.  (\  :]io. 

>^  :!(),  The  intei'ference  of  courts  of  (^piity,  in- 
stead of  b(nng  foun(h_'d  upon  the  theory  of  ])rot(M'- 
tion  to  tiieowner  of  trademarks,  is  now  sup])orted 
mainly  to  prevent  frauds  upon  the  public.  li"  th(! 
use  of  any  wcu'ds,  numerals,  or  symbols,  is  adopted 
for  the  pnrposoof  defrauding  the  public,  the  courts 
Vv-ill  ir.terfere  to  protect  the  publi<;  from  such  fra.ud- 
nlent  intent,  even  though  the  person  asking  t!ie  in- 
tervention of  the  court  may  not  have  the  exclusive 
right  to  tlu^  use  of  these  words,  numerals  oi*  syin- 
l)ols.  This  doctrine  is  fidly  supjjorted  by  tin; 
latest  English  cases  of  Lee  r.  Haley,  .1  (^  Ir;/.  App, 
CV/.v.  [Ldw  11.)  ir>."5,  and  Wotherspoon  /".  Cui'ri(>  in 
the  IIou.He  0''  Lords,  f)  Eiif/.  &  I.  App.  {Lnir  J}.) 
k)()8,  and  also  in  th<;  cuse  of  Newman  r.  Alvord,  Td 
New  Yorh\  ISO.  1877,  N.  Y.  Supreme  CI.  K  7'., 
Vax  BituxT,  J.,  Kinney  t\  Biiscli,  unreported. 

See  also  Tkademaiik. 


IfI 

(if 


16 


Abandoxmen. 


li  !S 


ABANDONMENT. 

^  41.  A  invented  a  medicine  to  wliicli  he  ^ave 
the  name  of  "  Chlorodyne,"  a  name  invented  by 
liim.self  as  a  fancy  title,  and  not  previously  k?io\vn 
in  tlie  medical  professsion.  B  advertised  for  sale  a 
medicine  which  lie  called  "•Chlorodyne"  and  sold 
as  B's  Chlorodyne.  A  tiled  a  bill  against  B,  but  did 
not  press  it  to  a  hearino:,  and  obtained  an  order  dis- 
missing it  with  costs.  B  subsequently  advertised 
his  medicine  as  "Original  Chlorodyne,"'  asserting 
that  he  was  the  iirst  inventor.  Upon  motion  for  in- 
junction in  a  second  bill  liled  by  A  to  restrain  B 
from  the  use  of  the  term  Original  Chlorodyne,  luicl^ 
that  altliougli  A  by  dismissing  his  former  suit,  liad 
abandoned  all  right  to  the  exclusive  use  of  the  term 
Chlorodyne,  he  would  have  been  entitled  to  restrain 
B  from  selling  his  medicine  as  Oriuinal  Chlorodvne 
if  he  had  adduced  evidence  that  any  one  had  l)een 
misled  by  the  title  into  buying  B's  instead  of  A's 
medicine.  18(54,  Yiee^Ch.  AVood's  (7/.,  Brov/ne 
V.  Freeman,  12  M'cc/d?/  IL  305;  and  see  S.  C,  4  iVeic, 
470. 

§  45,  The  use  of  some  Avord,  letter  or  character 
of  a  trademark,  by  dilTerent  i^arties,  will  not  work 
an  al)andonment  by  him  in  Avliom  its  right  of  use 
and  title  is  vested.  1871,  Influnwpoli.s  Stiperior 
CL  S.  T.,  Sold  V.  Geisendorf,  1  Wilson  {Lid.)  00. 

See  also  Acquiescexce  ;  LxVCIIES  ;  Loiitatiox  ; 
License. 


Abatement — Acquiescence. 


IT 


ABATEMENT. 


^  no.  In  n  tradernark  case  the  administratrix  of  the 
defendant  after  issue  and  before  trial  moved  tliat  tlie 
action  l)e  continued  against  lierself  as  administi-a- 
trix.  but  as  she  failed  to  show  that  the  defendant 
liad  .ncquired  any  rights  in  the  litigation,  or  tliat 
any  prejudice  would  result  to  the  defendant's  es- 
tate by  not  continuing  the  action,  or  that  any  ben- 
eht  would  i-esult  from  having  the  motion  granted, 
Ih'hl,  \\\\\X  no  case  was  shown  calling  for  the  exer- 
cise of  any  discretionary  i)ower  on  the  part  (^f  the 
court  to  grant  the  motion.  187G,  N.  Y.  i^upcrior 
Cf.  (r.  T.[  Republic  of  Peru  ?).  Reeves,  40  N.  F. 
Superior  Ct.  (8  J.  &  >9.)  316. 


W 


ne 
<cu\ 

icter 

"ork 

use 

•ior 

00. 


ACCOUNT. 

See  Damages. 


ACQUIESCENCE. 

§  55.  When  trademarks  are  used  under  a  protest 
by  their  owner  it  cannot  be  considered  that  there 
was  acquiescence  on  the  owner's  part.  1837,  Lord 
Ch.  CoTTExiiAM,  Motley  ??.  Downnian,  3  Mt/l.  cD 
CV-.  1  ;  S.  C,  0  Law  Jour.  (iV.  ,S'.)  CJi.  308. 

<^  50.  Where  the  plaintiffs  were  manufacturers 
iu  England  of  ^'Taylor's  Persian  Thread,"  and  the 
defendants,  in  America,  imitated  their  names, 
trademarks,  envelopes  and  labels,  and  placed  them 


I 


1 


\:  'si 


1'8 


ACQUIESCEXCE. 


on  thread  of  a  dilTcient  manufacture,  it-was  liekl 
that  it  was  a  iTaudulcnt  iiirrin,ii:eii)(Mit  by  the  defend- 
ants of  the  ri,i;ht  of  tlie  plaintilV,  for  wliicli  equity 
woidd  ^Tant  relief,  whether  othei' imm'suus  had  or 
had  not,  donti  th(;  same,  unless  done  with  the  con- 
sent or  acquiescence  of  the  plaintilf.  1844,  (L  >^. 
Circuit  CL  Mans.,  Taylor  «.  Carpenter,  1}  >^!or</, 
458. 

§  57.  A  suit  at  law  is  not  barred  nnh^ss  an  ac- 
quiescence for  a  period  equal  to  the  time  lixed  by 
the  statute  of  limitations  Ik*  shown,  or  the  marks 
were  dedicated  to  the  public,  as  is  i)rescribed  in 
respect  to  i)atents  or  inventions,  J  84(5,  U.  ^'. 
Circuit  Ct.  Mass.,  Taylor  t\  Carpenter,  2  \V<)odb.& 
M.  1. 

§  58.  There  is  something  very  abhorrent  in  al- 
lowiui2;  such  a  defense  to  a  Avr(mii;  which  consists  in 
counterfeiting  others'  marks  or  stamps,  def lauding 
othcisof  what  had  been  gained  by  their  iudusti-y 
and  skill,  and  robbing  them  of  the  fruits  of  their 
good  name,  merely  because  they  have  shown  for- 
bearance and  kindness.     AVooj)nritY,  J.,  il)i(/. 

§59.  The  C(jnsent  of  a  manufacturei'  to  tlie  us(> 
or  imitation  of  his  trademark  by  another  maj',  per- 
liaps,  b('  justly  inferred  IVom  his  knowledge  and  si- 
lence ;  bat  such  a  consent,  whether  express  or  im- 
l^lied,  when  i)ui'ely  gratuitous,  may  certainly  be 
withdi'awn  ;  and  when  iiuplied  it  lasts  no  longer 
than  the  silence  from  which  it  springs.  It  is,  in 
reality,  no  more  tlian  a  revocable  license.  The  ex- 
istence of  the  fact  may  be  a  proper  subjecrt  of  in- 
quiry on  taking  an  account  of  prolits,  if  such  an 
account  should  be  decreed  ;  but  even  the  aduiission 
of  the  fact  would  furnish  no  reason  for  refusing  an 
injunction.    1849,  N.  Y.  Superior  CI.  8.  T.,  Dueu, 


^m 


ACQUIESCKNC^K. 


)nger 


ig  an 

UEll, 


V]\.  J.,  Amoskeag  ^[auiif:ic hiring  Co.    n.  Spear,  2 

siiifir.  :)\y.). 

i  (J(».  Where  an  injiinclioii  is  granted  lo  restrain 
the  use  of  a  Hademtuk,  jukI  the  delViwlant  disobeys 
andliie  plaintilf  moves  for  a  eoniniittnl,  aeqiiies- 
ceii('(\  ir  se/:  up  as  a  defense  against  the  motion  t(» 
a('(piit,  imist  he  shown  to  be  sneh  as  to  antount  al- 
most to  a  license  to  nse  tlie  mai'iv,  and  entitling  the 
defendant  hiinsell'  to  a  right  in  the  ns(i  of  tho  mark. 
18.");},  Lords  Jii.sUccH  on  A2>i>('(d,  Jiodgers  r.  Xowill, 
2:?  L.  J.  (vY.  X.)  Ch.  404;  reversing  S.  C,  17  Eny. 
L.  iS:  Eg.  8:3;  S.  C,  U  Jurist,  10<.>. 

^(5J.  The  court  refused  to  grant  an  injunction 
at  the  suit  of  Flavel,  to  restrain  Harrison  from 
making  and  selling  a  stove  by  the  name  of  "  Fla- 
vel's  Patent  Kitchener,"  on  the  ground,  lirst,  that 
Flav<>l  had  falsely  assumed  to  describe  the  article 
as  being  ])atented,  and,  secondly,  that  Ik;  had 
known  of  the  us(;  of  tlie  name  by  Harrison  four 
months  before  lie  applied  for  an  injunction.  J3ut 
tlie  court  not  deciding  Aviiether  J'lavel  liad  or  had 
not  a  legal  remedy,  retained  the  bill,  giving  him  lib- 
eity  to  biing  an  action.  ]8r)o,  Vice  Ck.  Wooff.'i 
Cl]  Flavel  (\  Hairison,  10  Hare,  407;  S.  C,  19 
'ENf/.  Jjtw  &  Eq.  15  ;  S.  C,  17  Jurifit,  3GS. 

$;  02.  In  order  to  prove  acquiescence  by  a  firm  in 
tlie  piratical  use  of  their  trademark,  knowledge  of 
sncli  nse  must  be  ja'oved ;  and  that  is  not  accom- 
plished by  the  \nxwi  of  publication  of  adveitise- 
nients,  which  would  have  l)een  an  invasion  of  the 
rights  of  the  iirm.if  those  advertisements  have  been 
issued  not  steadily  or  unifoinily,  but  intei'changeably 
with  other  advertisements  in  some  resi^ects  similar, 
but  not  infringing  the  rights  of  the  lirm.     1803, 


■    W. 


20 


Acquiescence. 


Lord  Cli.  BiiADY,  Kinalian  v,  Bolton,  15  Irish  Ch. 

§  03.  A  i)ei'son  inny  undoubtedly  consent  to  the 
eini)loy!nent  of  liis  name  for  a  hotel,  but  il'  sucli 
i'ousent  1^5  purely  gratuitous,  or  unless  there  is 
some  vali<l  ai^reenient  bindin.i;'  upon  the  party  wlio 
gives  tlie  consent,  it  may  be  witlidravvn  at  the  ]>leas- 
ure  of  such  i>arty.  1804,  N.  Y.  ^uprcinc  CL  O.  7\, 
McCardel  f\  Peck,  28  I/ow.  Fr.  120. 

§  04,  It  is  no  defense  that  a  fraud  lias  been  mul- 
tJi)lied.  Accpiiescence  cannot  be  inferred  and  it  is 
revocable  it'  it  could  be.  1800,  iV.  Y.  i^upreme  Ct. 
.y.  7:,  (xillott  c.  Esterl)rook,  47  B(irb.  455. 

^  05.  The  issuing-  of  a  "caution"  to  the  public 
bv  the  owner  of  a  ti'adeniark  will  not  be  construed 
as  an  irrevocable  acquiescence  in  its  use  by  others. 
1807,  iY.  Y.  Supritnie  (Jt.  G.  T.,  (iillott  c.  Esterbrook, 
47  B(irb.  455.     See  §  73,  infra. 

i  00.  Injunction  granted  to  restrain  the  use  of 
the  plain  till"  s  trademark  by  the  defendants,  though 
the  scienter  was  not  i)roved,  but  an  account  of 
profits  refused  on  the  ground  of  delay  by  the  plain- 
tilfs  in  commencing  the  suit.  1805,  Vice  Ch.  Wood' ti 
CI.,  Harrison  v.  Taylor,  11  Jurist  (xT.  8.)  408;  S. 
C,  12  Law  Times  (iY.  *S'.)  339;  apjmn'ed  and 
followed  in  Amoskeag  Manufacturing  Co.  v.  Gar- 
ner, infra.,  §  77. 

Jj  07.  In  a  suit  to  enjoin  defendant  from  selling 
"Charter  Oak"  stoves,  bearing  a  certain  trade- 
mark, the  fact  that  parties  in  other  localities  manu- 
factured "Charter  Oak"  stoves,  and  sent  them  into 
market  to  compete  with  i>laintiff's  numufactures, 
in  no  way  aids  the  defense,  unless  it  appears  that 
the  plaintiff  assented  to  or  acquiesced  in  such  in- 


ACiillKSCKXCK. 


21 


of 
ain- 

kV  .s* 


S. 


fi-liVj;(Murnrs  npoii  liis  )i,<j;hrs.  ISOl),  ^'^xprciiie  CI.  of 
Mo.,  Filley  r.  I'^isscrt,  41  Jfo.  lOS. 

);  (;s.  A  (li'lay  ())■  nine  yt'iii's  in  npi)Iyiii.i;  for  an 
iiijmiclioii  tu  icsfi-iiii  tiic  vi.»latioii  of  Ji  tradcniai'k, 
is,  ii"  lilt' iilaiiirilf  li:i(i  knowledge  of  tlio  violation, 
ii'ood  cause  foi'  ivriisini;  an  a[)plication  lljeidor. 
Ksc/.),  .V.  )'.  S///>j(///('  CL  X.  7'.,  Anioskca.i;-  Mann- 
fa  ct  mi  ni;  Co.  r.  (Jarner,  fw  Ba/I).  151 ;  S.  C,  i)  Ahh. 
Pr.  (x"x)i2CM. 

iV)\).  AV'lien  a  trader  believes  that  he  has  ,u<)o(l 
'j:ronnd  for  complaining  of  a  ('(jlorable  indlation  of 
tlie  (Style  of  his  bnsiness,  he  is  jnstitied  in  waiting 
nntil  he  can  collect  a  snflicient  nnml)er  of  cases  to 
show  that  tlie  alleged  attempts  lias  succeeded,  be- 
fore he  tiles  liis  ))ill  ;  inasmnch  as  it  wonld  not  l)e 
safe  for  him  to  conu;  into  the  conrt  of  chanc<M"y  nn- 
til he  conld  establish  actnal  cases  of  <lece|»tion. 
IStJD,  before  Lord  Jnstice  (xIFFAUI)  on  api)eal,  Lee 
(\  Haley,  18  Wccldi/  It.  242  ;  S.  C,  L.  Ji.  o  Ch. 
l.M  ;  S.  C,  22  Law  Tt'/Ncs  ^\  K  2.T1  ;  S.  C,  :)0  La/o 
.Jonrnal  (Jh.  284.  Aliirming,  S.  C,  18  Wcdch/ If. 
181  ;  21  Lfuo  T!iN,s  {X.  K)  o40. 

>j  70.  The  i)laintiirs,  who  for  many  years  past 
had  been  mining  coal,  cltdnied an exclnsive  light  to 
use  the  name  "Lackawanna  coal"  as  a  special,  par- 
ticular and  distinctive  name  or  trademark  for  cotil, 
and  tiled  a  bill  to  enjoin  the  defendant  from  using 
those  woi'ds  to  desiijnate  <'oal  wold  by  him,  which 
was  not  mined  by  the  plaintiifs.  Jle/d,  that  what- 
ever rights  the  i)laintill:  might  once  have  had,  that 
they  had  lost  such  rights  by  their  acts  of  acquies- 
cence in  the  use  of  those  words  })y  the  defendant  to 
designate  coal  st)ld  }>v  him  which  had  not  been 
mined  by  the  plaintiifs,  and  that  such  acts  of  ac- 
quiescence Avere  equivalent  to  a  license  to  the  de- 


i^. 


iirifmrryii 


22 


ACQUIE.SCKXCE. 


fiMulant  to  use  (liose  words  ((»  (L^.si^^iuitt^  (Ik*  fojil 
sold  by  him,  and  tliat  plaiiiiiUs  \v<'r<'  (•■.|iiilal)lv' 
fsr()})i)od  IVom  enjoiiiiiiii;  tlic  d»'l«'!ida:it  I'lom  usiaiv 
said  words  t'oi' sucl>  i)ui'i)os(^  hS7(),  6'.  >S'.  (*ircnil. 
(.'/.  X.  v.,  Delaware  &;  Hudson  Canal  Conipaay  r. 
Clark,  7  lUatt-Jif.  112  ;  and  see  S,  C,  on  api/t'al,  13 
TIW/.  31]. 

%1\.  t<cii(hJ('.  AVliere  a  tiade]'  accpiiesoes  in  a 
particular  inCrinuement  of  liis  trademark  J'or  a  con- 
siderable i)eriod  durini;-  Ills  lii'e.  his  rej)resentati\es 
will  IxMinahle  to  restrain  it  aftei-  Ids  death.  1870, 
A'iceCh.  J3ACOX,  Ilovenilen  i\  Lloyd,  IS  Wcc/d//  Ji. 
1132. 

,^  72.  An  injunction,  altliou^-h  the  facts  in  sup- 
port of  it  are  suliicient,  will  not  be  ^"ranted  uidess 
the  application  is  made  speedily.  An  introductory 
ni)plication  lefused  by  reascm  of  a  d<'lay  of  twenty 
nionilis.  1871,  Vt're  Ok.  Bacoib  .s  CI.,  Isaacson  v. 
Tli()mi)S(m,  20  Wce/d//  U.  100. 

§  ?;'..  The  nse  of  a  trademarlv  by  others  for  a 
period  of  twenty  yeai"s,  where  the  j)laintifTs  had  no 
knowled,u;e  of  such  practice,  and  did  not  authorize 
or  ac([iuesce  in  the  same,  does  not  preclude  the 
owner  Irtmi  enforcin^j,' his  sole  ri,ii,'ht.  1872,  N.  Y. 
CoiU.  of  A  pp.,  Gillott  V.  Esterbrook,  48  N.  Y.  374: ; 
aflirming-  S.  C,  47  JJarl).  445. 

^74.     The  imlawful  use  of  a  trademark   lor 
years  by  the  defendant  does  not  gi\  -  title  to 

the  mark.     1^12,  Supreme  Ct.  of  Lt         //^«,  Wolfe 
?'.  Barnett,  24  La.  An.  07. 

^  75.  Tne  court  will  not  refuse  to  i;-rai!  an  in- 
junction to  restrain  the  infrinu'ement  of  a  tmde- 
mark  on  the  mere  ground  that  a  great  number  of 
years  jiave  elapsed  since  it  was  iirst  infringed  by 
the  defendant.    But  when  many  years  have  elax>sed 


Acquisition  of  Ti!adi:mai:ks. 


23 


iJ 


before  the  pljiiiitUf  takes  steps  to  ivstraiii  tlit^  in- 
rriu^nMiieiit,  tlie  court  will  riMiuirecleaivr  proof  than 
it  would  otlierwiselmve (lone  that  tli(>  tnideiuai'k  was 
adopted  oriL!:iiK»lly  with  I'randiileut  intent,  :nid  will 
requin^  the  phrnitillF  to  prove  th;it  lie  h;is  heea  ae- 
tunlly  injured  by  the  inrrin,!j;enient.  1874,  (^li(ni'-< rij 
ill.  (<f  Apprdh  L.  J.  ./.,  llod,i,0'rs  i\  IJod^'ei's,  :>1  A. 
T.  h.  (X  >^'.)  285;  S.  (.\,  22  W.  Ji.  887. 

^  TO,  Thon/^-h  one  discover  oi'  invent  an  !\rticU> 
and  JA'ive  it  a  peculiiirand  distinctive  name,  if  lie 
permit  anotlier  with  his  jicipiiescence  to  approjirijite 
it  with  that  name  and  to  jnit  it  foi-th  to  tlie  ])iil»]ic 
as  his  own,  that  other  will  l)ecome  th<'  ])roi)rietoi'  of 
tin*  name,  if  lie  meets  th(>  other  conditions  pre- 
scribed by  the  hiw  in  sncli  cases.  1874,  X.  )'.  (Jt. 
of  App.,  Caswell  (\  Davis,  AS  N.  Y.  22:5. 

^  77.  Wliere  the  plaintiff  had  delayed  commenc- 
ing suit  an  injunction  was  issued  to  restrain  the  use 
of  plaintifT's  trademark,  but  without  damaives  or 
account  of  profits  and  without  costs.  1870,  X.  V. 
Hit  pre  me  Ct.  H.  T.^  Amosktniji:  Ahinufa<'tniin/^^  (Jo. 
T.  Garner,  4  Am.  Law  Times  (iT.  X.)  170. 

See  also  Ahaxdoxmext,  ^,^44-40;  Laches,  §,:? 
r)().')-507  ;  LicEXSE,^§  520-522  ;  Llmitatiox,  >J,^  525- 
527. 


ACQUISITION  OF  TRABEMAPJvS. 

§85.  Bi/  operation  of  law. — A  ri,2;ht  to  use  a 
trademark  is  in  the  natnre  of  a  personal  chattel  and 
will  g'o  to  the  representatives  of  its  owner  on  his 
decease.  184.6,  case  cited  by  the  vice  chancellor  in 
nine  V.  Lart,  10  Jurist.,  lOG, 

^  SG.     The  venders  of  an  article  of  trade  or  man- 


!  ' 


<.'!■< 


K»"ff 

111-    (  * 


mm. 


24 


Acquisition  of  Tkademarks. 


ufacf  ure,  are  entitled  to  be  protected  in  the  use  of 
{I  tmdenuu'k,  altli<)u<^li  they  do  not  manufacture  the 
goods  to  whicli  ir  is  ai>[)]ied.  IS-iO,  Lott,  Senator, 
X  r.  Ct.  of  Errors,  Tayk)r  v.  Carpenter,  11  Pahje^ 
292 ;  S.  C. ,  '2  Hamlf.  CJt ".  G()3. 

§87.  lij/  pKrchaHC: — The  phuntiffs  agreed  with 
A,  the  proprietor  of  a  hotel,  to  pay  him  a  certain 
sum  for  tlie  privilege  of  using  tlie  name  of  A,  and 
of  his  hotel,  on  certain  coaches  of  the  plaintiff's, 
used  for  the  conveyance  of  i)assengers  to  and  from 
the  hotel  of  A,  and  on  certain  badges  worn  by  the 
drivers  of  those  coaches,  i)laintiffs  giving  security 
to  A  for  the  gO(jd  conduct  of  himself  and  servants 
in  the  conversance  of  such  passengers.  Jlchl^  that 
the  plaintiffs  had  an  exclusive  right  as  against 
third  pai'ties  in  the  use  of  the  name  of  A's  hotel  on 
his  coaches  and  badges  ;  that  he  was  entitled  to  an 
injunction  to  restrain  the  use  by  any  other  party 
on  coaches  or  badges  of  the  name  of  A's  hotel,  or 
of  any  device  or  sign  wliich  might  induce  a 
stranger  to  believe  that  the  defendants  were  cori- 
nected  with  the  hotel  of  A.  The  name  "Irving 
House  '  when  used  as  above,  protected.  IS.'iO,  N. 
Y.  ^^Kperlor  Ct.  H.  T.,  Stone  g.  Carlan,  1-]  Mo)itlilij 
L.  R.  800. 

§  88.  Ih/ purchase. — Marsh  made  an  oi'al  agree- 
ment with  S,  the  lessee  of  the  Revere  House,  by 
whicli  he  agreed  to  keep  good  coaches,  horses,  and 
to  employ  good  drivers,  on  the  arrival  of  cei'ttdn 
trains  at  the  Boston  and  AVoi'cester  Kaib'oad  sta-, 
tion,  to  convey  passengers  arriving  at  the  station 
who  might  wish  to  go  to  the  Revere  House  ;  and  in 
consideration  t)f  which,  S  agi'eed  to  employ  !M  to 
convey  all  the  passengers  from  the  Revere  House 
to  the  station,  and  authorized  him  to  put  on  his 


ACQUISITIOX   OF   Tll.VDEMAllKS. 


23 


coaolie?^.  and  on  the  caps  ot*  liis  drivers,  as  a  badge, 
the  words  -'Revere  House."  A  similar  agreenieiit, 
previously  existing  between  S  and  B,  had  been  ter- 


db 


ued 


uutual  consent ;  but  B  still  con 
to  cany  the  words  ''Revere  House"  as  a  bjulge  on 
his  coaches  and  on  the  caps  of  his  drivers,  although 
requested  not  to  do  so  by  S  ;  and  his  drivers  con- 
stantly called  ''Reveie  House'"  at  the  station,  and 
diverted  passengei-s  tnmi  his  coaches  into  B's.  An 
action  on  the  case  was  brought  by  M  against  P>  I'or 
using  said  badge  and  diverting  passengers,  aud  it 
was  held,  tliat  M,  by  liis  agreement  with  S,  had  an 
exclusive  I'ight  to  use  the  words  "Revere  House," 
i'or  the  purpose  of  indicating  that  he  had  the 
patronage  of  that  house  for  the  transportaliou  of 
passengei's  ;  that  if  ]i  used  those  words  for  the  i)nr- 
pose  of  holding  himself  out  as  having  the  patronage 
and  confiden(!e  of  the  lessee  of  the  Revere  House, 
and  in  that  way  to  induce  passengers  to  go  in  his 
coaches  rather  than  in  M's,  this  would  be  a  fraud 
on  the  |)laintiJf  and  a  violati(m  of  i)lainti]1'"s  rights, 
for  wliich  the  action  would  lie,  without  proof  of 
actual,  specillc  damages.  ILUJ,  further,  that  M 
would  be  entitled  to  recover  such  dauiages  as  tho 
jury,  ui)on  the  whole  evidence,  should  be  satislied 
that  lie  had  sustaiued,  and  that  the  damages  would 
not  be  conlined  to  the  loss  of  such  passengers  as  he 
could  pi'ove  were  actually  diverted  from  liis  coaches 
to  the  defendant's  ;  but  that  the  jury  would  be  jus- 
tified in  making  such  inferences,  as  to  the  loss  of 
passengers  and  injury  sustained,  as  they  might 
think  were  warranted  by  the  whole  evidence  in  the 
case.  J8,-)l,  l^aprcine  Jndl.  CL  of  Mass.,  Marsh  y. 
Billings,  7  Cush.  H22. 
^  81).     Ih/  adopt iou. — Certain  music  publishers 


m 


'} 

1 

f 

5  1' 


26 


ACQUISITIOX   OF  TUADEMARKS. 


liaving  adapted  oriuinal  words  to  an  old  Amevican 
air  wliicli  was  ](»-iu'rauu:(Ml  for  tlKMii,  gave  to  the 
song  so  coniposcd  the  Jianie  of  "MinTiie,"  iind  im)- 
eured  it  lo  Ih' sung  by  Madame  Anna  Thilhni,  a  pop- 
uhw  singer,  at  M.  .lulian's  concerts  in  London  ;  and 
when  it  Juid  by  tiiat  means  become  a  favorite  song, 
they  published  it  Avitli  a  title  page,  containing  a 
picture  of  the  singer  who  had  brought  tlie  song  in- 
to noti(;e,  and  the  words  'vMinnie,  sung  by  Ma(hnne 
Anna  Tliillon  and  Miss  Dolby,  at  Julian's  coucerts, 
wi'itten  by  Geoi-ge  L^lnley,"  &v.  Jlc/d,  that  the 
pnblishei's  had  by  these  means  ol)tained  a  light  of 
ju'oi)erty  in  that  name  and  descripti<m  of  their  song 
which  a  court  of  equity  would  restrain  any  ])erson 
from  infringing.  ]S'.'u),  V/ca  iJIi.  I Too^/'-y  CY.,  Chap- 
pell  e.  !S heard,  "2  luuj  &  .J.  117. 

§  90.  (Jicnership  coujined  to  place  where  nscfl. — 
The  eui])h)yment  of  ])articular  words  or  insignia,  as 
a  trademark,  must  be  c(nilined  to  the  place  where 
they  are  uscmI,  and  the  exportation  of  the  articles 
barring  the  trademark  to  other  ])laces  cannot  inter- 
fere with  tlie  right  acquired  ])y  others  previously 
nsing  the  same  words,  tVc,  in  snch  places.  18()(),  N. 
Y.  l^iipcrior  CI.  (I.  7'.,  Corwiji  v.  Daly,  7  ./>V>.v//\  ^22. 

§  1)1.  />//  ^^s•c. — Loii/t/t  of  tiiiie  rrqitin/d. — It 
lias  scmietimes  ))een  supposed  that  a  manufactnrer 
can  only  ac([uire  such  a  property  in  a  tradennirk  as 
will  enable  him  to  sue  for  an  injunction  against  the 
piracy  of  it  by  others,  by  his  having  enjoyed  so 
hmg  andccmtinueda  use  of  it  as  issullicient  to  give 
it  reputation  in  the  market  where  such  goods  are 
sold.  ]3ut  1  entertain  gic^at  doubt  as  to  the  cori'ect- 
ness  of  that  view  oL'  the  law.  The  interfeience  of 
a  court  of  ecpiity  cannot,  it  appears  to  me,  depcMul 
ni)on  the  leugth  of  time  the  manufacturer  has  used 


ACQUISITIOX   OF   Ti:.\Di;:\[AKKS. 


27 


it.  If  the  brand  or  mark  ])e  an  old  one  formerly 
used,  bnt  since  discontinued,  the  foi'iner  proprietor 
undoubtedly  cannot  ivtain  such  a.  lu'oiierty  in  il  or 


event  others  from  nsin^'it.     l)Ul.  ])i(»vi(h'd  i(  1 


lar 


been  originally  adopted  by  a.  manufacturer  aud  lias 
been  conliniiously  ami  still  is  used  by  him  to  (h^- 
note  liis  own  y,'oods,  wlien  broug-ht  into  the  markel 
and  oll'ered  for  sale  thei'e,  I  aptiiohend,  althouuli  the 
uiark  may  not  liave  been  adopted  aAveek,  aud  may 
not  have  acquired  any  reputation  in  the  market, 
his  neii^hbors  cannot  nse  that  mark.  Weiv  it  otliei'- 
wisc,  and  wcrc^  the  qnestion  to  dejx'ud  (^ntii'ely  on 
the  tiuu;  the  maik  had  been  used,  or  the  reputation 
of  it  liad  been  aupiired,  a  very  diiliculr,  if  not  an 
insoluble  inipiiry  would  luive  to  l)e  o])ened  in  every 
case,  namely,  whether  the  mark  had  ac([uii(:Hl  in 
the  market  a  distinctive  chai-acter,  denotiug  the 
goods  of  the  person  wiio  lirst  used  it  i  'J  he  ath)])- 
tion  of  it  by  another  is  proof  that  he  consichMsat 
that  time  it  is  likely  to  l)ecouie  benelicial.  If  tln-i 
manufacturer  Avho  lirst  used  it  were  iu)r  ^jrotectcd 
from  {\w  earliest  moment,  it  is  obvious  tliat  mali<'- 
ions  and  pertinacious  rivals  mi.ght  prtwent  him  from 
ever  acquirin<i-  any  distinctive  mark  or  l)rand  to  do 
note  his  goods  in  the  market  by  adoi)tiu,u,'  his  mark, 
however  varied,  immediately  after  its  adoption  oi- 
chanu'e  bv  the  person  who  had  oriuinallv  nsed  it. 
That  evil  would  not  be  obviated  by  his  putting  his 
name  in  full  :  for  if  the  name  of  the  numufacluivr 
was  a  common  one  it  would  be  dillicult  for  him  to 
point  out  to  the  ])nblic  what  goods  were  or  were 
not  mnuuractuved  by  him.  These  observations,  in 
my  opinion.  api>ly  to  brands  and  mai'ivs  genei'ally. 
1803,  JA/.vA/-  f;/'  !h<'  Jinlls,  Hall  r.  IJaiTows.  S  A.  7'. 
(xT.  .S^)  1121 :  s".  (;.,  11  Wirl.-h/  11.  iVi,') ;  S.  C,  \)  J  arid 


tm 


'4 


w^mmm 


28 


Acquisition  of  Tuademaiiks. 


{N.  S.)  483  ;  S.  C,  32  Law  J.  {K.  R)  CJt.  548  ;  1 
[New,  543  ;  S.  C,  on  appeal,  9  L.  T.  (xY.  *S'.)  501  ;  12 
W.  It.  322  ;  10  Jurist  (lY.  H.)  55  ;  33  Law  J.  {N.  ;S.) 
(Jk.  204. 

g  1)2.  Bij  license. — A  party  will  be  restrained 
bv  ininnelion  from  the  continued  use  of  a  trade- 
mariv  bel()ii,ii;ing  to  another,  Avhicli  he  has  used  ini- 
der  an  ni'.KHMnent  and  with  the  consent  of  the 
owner  and  lor  the  l)enelit  of  both,  after  the  owr-^.' 
siiaii  witiidraw  his  interest  from  the  business  and 
claim  the  use  of  his  trademark  exclusively,  unless 
the  i)aity  claiming  to  use  it  shall  show  clearly  by 
tile  agreement  that  the  owner  intended  lo  and  had 
forever  parted  with  liis  right  to  the  use  of  such 
trademaik.  18(54,  N.  1'.  iSupreme  Ct.  G.  7\,  Mc- 
Cardei  r.  i'eck,  28  Jlow.  Pr.  120. 

§  93.  Bti  use. — *V/.r  2cee/is  use  sufficient. — The 
use  of  the  trademark  "Anatolia"  for  the  period  of 
about  six  weeks,  during  which  it  had  become 
known  in  the  market,  hetd,  sulhcient  to  confer  an 
exclusive  I'igUt  thereto.  The  elemenis  of  the  right 
of  piopeity  in  a  trademark  may  be  repi'csented  as 
being  the  fact  of  the  article  being  in  the  maiket  as 
a  vendible  article  with  the  stamp  or  tradiMnark 
upon  it  at  the  time  when  the  defendants  imitate  it. 
1804,  Defore  Lord  (Jh.  WEsTr.uuY,  on  appeal,  Mc- 
Andrew  v.  Jiassett,  10  Jurist  (iY.  >S'.)  550  ;  «.  C,  33 
L(iw  J.  {A'.  aV.)  V/i.  501  ;  IS.  C,  12  Wee/cJi/  E.  Ill ; 
S.  C,  10  Leiw  Times  {N.  ^.)  442;  alhrming  S.  C, 
10  Jurist  {N.  H.)  402  ;  S.  C,  10  Law  T.  {N.  X)  05. 

5^  04.  L'ssenliai  qualities. — The  essential  quali- 
ties for  constituting  proi^erty  in  a  trademark  prob- 
ably would  be  found  to  be  no  other  than  these: 
First,  that  (he  mark  has  been  applied  by  the  i)lain- 
tiirs  properly ;   that  is  to  say,  that  they  iiave  not 


i 


mm 


Acquisition  of  TRAUE:\rAUKs. 


29 


^ 


3 


copied  any  other  person's  mark,  and  that  the  mark 
does  not  involve  any  false  representation  ;  secondly, 
that  the  article  so  marked  is  actually  a  vendible  ar- 
ticle in  the  niaiket ;  and  thirdly,  thnt  the  deiend- 
ants,  knowing  that  to  be  so,  have  imitated  the  mark 
for  the  purpose  ol'  passing  in  the  market  other  arti- 
cles of  a  similar  description.  1804,  Lord  Chancellor 
WESTHniY,  McAndrews  r.  Bassett,  10  Jurint  N.  S. 
Two  ;  S.  C,  ;};3  Law  J.  {N.  .S\)  (Jit.  .001  ;  S.  C,  12 
V^evldii  E.  777;  S.  C,  10  Law  T lines  \N.  S\)  442. 
^  or).  AdopUon  and  Vfic. — Any  name,  syml)ol, 
letter,  figure  or  device  adopted  by  the  i)er,sons  man- 
ufacturing or  selling  goods  and  used  and  put  upon 
such  goods  to  distinguish  them  from  thos(?  manu- 
factured or  sold  by  others,  and  enii)loyed  so  often 
and  for  such  a  length  of  time  as  to  rjuse  the  jire- 
sumption  that  the  public  would  know  that  it  was 
used  to  indicate  ownership  of  the  goods  in  the  i)er- 
son  manufacturing  or  selling  them,  constitutes  his 
trademark.  His  I'iglit  to  the  trademark  accrues  to 
him  from  its  adoi)tion  and  use  for  the  purpose  of 
designating  the  particular  goods  he  manufactures 
or  sells,  and  although  it  has  no  value  except  when 
so  employed,  and,  indeed,  has  no  separate  exist- 
ence, but  is  appurtenant  to  the  goods  designated, 
yet  the  trademark  is  property,  and  the  owner's 
right  of  property  in  it  is  complete  as  that  which  he 
possesses  in  the  goods  to  which  ho  attaches  it,  and 
the  law  protects  him  in  the  enjoyment  of  the  one 
as  fully  as  of  the  other.  In  (nxler  that  the  claimant 
of  the  tradeniark  may  primarily  acquire  the  right 
of  property  in  it,  it  must  have  been  originally 
adopted  and  used  by  him — that  is,  the  assumed 
name  oi  designation  must  not  be  one  that  was  then 
in  actual  use  by  others,  and  such  adoption  and  use 


f    i; 


-!>-( 


i 


■1       I 


...» 


^ 


»'1 


30 


Acquisition  of  Tiiademakks. 


confer  upon  liini  tlie  ii;j:]it  of  projicrty  in  tlie  trade- 
mark. 180."),  t^fipre.nic  Vf.  of  Ca/.,  Deirinc^'er  ^\ 
Plate,  29  rV/A  202. 

i^j  OG.  IVol  dependent  on.  statatori/  lam. — The 
ri2;lit  of  property  in  a  trademark  does  not  in  any 
manner  <lepend  lor  its  inceptive  existence  or  sup- 
port upon  statutory  law,  altliougli  its  exercise 
may  be  limited  tjr  controlled  by  statute.  1805, 
Dei'ringer  i\  Plate,  thhl. 

%  97.  Operrdlon  of  hiw.—The  trademaik  of  a  de- 
funct cor])oration  does  not  descend  to  tlie  stock- 
holders ;!t  the  time  of  its  dissolution.  1800,  Supe- 
rior CI.  of  (Jhicar/o^  f^hcrn'ood  v.  Andrews,  o  Am. 
La.iD  Her/.  {N.  S.)  ,088. 

§  98.  B//  prior  ajJ2yropriafion.-^lt  is  well  set- 
tled by  the  determination  of  the  courts  of  this 
country,  and  the  Eiiglish  and  French  law  is  the 
same,  that  a  person  may,  by  priority  of  approi)ri- 
ation  of  names,  letters,  iigures,  or  symbols  of  any 
kind,  to  distinguish  his  manufacture,  acquire  a 
property  therein  as  a  trademark,  for  the  invasion 
of  which  an  action  will  lie,  and  in  the  exclusive 
use  of  which  he  may  liave  protection  by  injunction. 
1808,  iT.  y.  Com.P/eafi,  G.  T.,  Curtis*  v.  Bryan,  2 
Bahj,  312  ;  S.  C,  ;',0  How.  Pr.  83. 

§  90.  It  would  seem-  that  where  a  public  admin- 
istrator sells  at  publi^  auction  the  right,  title  and 
interest  which  a  decedent  had  in  his  liTetime  in 
a  newspaper,  including  the  good-will  thereof,  the 
purchaser  would  not  acquire  such  a  light  of  prop- 
erty in  the  name  or  title,  as  wonld  prevent  the 
st'.me  name  being  assumed  afterwards,  by  another 
person.  1808,  X.  Y.  Superior  Ct.  S.  T.,  Stephens  v. 
D(?  C(^nto,  4  At)b.  Pr.  (lY.  *S'.)  47 ;  S.  C,  7  PoM.  343. 

8  100.     Bill  in  equity  to  restrain  the  use  on  the 


ACQriSITIOX   OF  TUADEMAIilCS. 


m 


laliels  on  luzor  straps  sold  l).v  d^'fendant  of  Mio  woi-ds 
"Genuine  Kazor  Strap/'  Charles  Kinerson,  Si-.. 
was  the  ori,irinal  inventor  and  nialcci-ol!  razo:-  sirap- 
which  l)ore  a  laliel  statin.si,-  Iht'y  wei'e  ]iia(h>  hy 
"(Jharles  Emerson,  Emerson  Plaee."  He  em])h)yed 
and  taii,;;'ht  his  business  to  iive  of  liis  nephews,  oi' 
wlioni  .15.  Baduer,  the  father  of  defendant,  was  the 
elch'st,  and  the  plaintilf,  the  third.  Said  ]jad,uer, 
in  his  uncle's  lifc^time,  left  his  employment  and 
continued,  with  his  pin-niission,  hut  on  his  own 
account,  to  nianiifactur<»  and  sell  such  stia])s.  and 
to  use  the  same  label  thereon,  and  was  succeeded 
in  business  bv  his  son,  the  defendant.  The  uncle 
died  without  issue;  his  nephews  wei'e  anionj^-  his 
lieii's  at  law,  and  his  business  and  tradeniaik  w(M'e 
not  disposed  of  })y  himself,  by  will  or  othei'wise, 
or  by  his  administratoi'.  The  plaintitf,  afttM'  his 
uncle's  decease,  continued  the  business  at  the  same 
place,  and,  used  a  label  precisely  simiiai'  to  that  for- 
merly used  by  the  uncle.  The  lalud  used  by  the 
defendant  did  not  represent  his  vtv/.ov  straps  to  be 
made  by  the  i)laintilt'  or  by  any  person  of  tlie  name 
of  Charles  Emerscm,  but  stated,  with  extu't  fi'uih, 
the  I'elation  of  the  defendant  to  the  oiiiilnal  in- 
ventor and  owner.  Ifdd,  that  the  ])lainlin',  thongli 
bearing  the  same  name  as  the  oriu'inal  (Jharles  Em- 
erson, had  no  .u'l'ealer  right  than  the  defendant  to 
hold  himself  out  as  such,  or  to  use  the  label  of  his 
uncle.  That  the  plaintift"  had  failed  to  prove  either 
any  infringement  of  his  own  rights,  or  any  vrrong- 
ful  act  of  the  defendant.  1800,  Siipn'iur  JudJ.  CI. 
of  MdJis.,  Emerson  v.  Badger,  101  JIa.s.s.  82. 

i  101.  A(?op/ion  and  use. — B}'  the  adoption  and 
use  of  a  mnne  and  device,  adapted  lo  point  out  the 
ti'ue  source  antl  origin  of  the  manufactured  article. 


fj  / 


t  ., 


su" 


83 


Acquisition  of  Trademarks. 


the  mnmifactnrer  acquires  a  property  therein  wliich 
the  courts  will  protect.  ISf)!),  ,S///yri'//i<'  CL  of  Mis- 
souri, Filley  ?'.  Fassett,  44  Mo.  1(58. 

§  102.  Appropriation  and  vse. — Ev^ery  person 
who  uses  a  trademark,  be  it  the  label  on  a  bottle, 
or  the  name  or  title  of  a  periodical  or  magazine,  l)y 
his  appropriation  and  user  of  the  name  acquires  a 
property  in  that  name,  and  has  a  right  to  restrain 
any  other  person  from  using  the  same  name  in  such 
a  manner  as  would  lead,  or  be  calcidated  to  lead, 
the  public  to  believe  that  they  are  jiurchasing  one 
thing  when,  in  truth,  they  are  purchasing  another, 
18G0,  Vice  Ch.  Malin's  CL,  Bradbury  v.  Beeton, 
39  Laio  Journal  n.  Ch.  {K.  S.)  ni. 

§  103.  In  1844,  Sohnnon  Lloyd  invented  a  com- 
position for  shaving,  and  called  it  "Lloyd's 
Euxesis."  In  1874,  his  son,  A.  S.  Lloyd,  joined  his 
father  in  business,  at  a  weekly  salary.  In  18r)4,  Sol- 
omon Lloyd  died  intestate,  and  no  letters  of  admin- 
istrati(mwere  taken  out.  From  ]8i54  to  ]8()7,  A.  S. 
Llovd  and  his  wife,  the  defendant,  carried  on  the 
manufacture  of  Lloyd's  Euxesis.  The  widow  of  S. 
Lloyd  made  a  claim  on  this  account  upon  A.  S. 
Lloyd,  which  he  satisfied  by  making  her  a  weekly 
allowance  during  the  rest  of  her  life.  In  June, 
1867,  defendant  separated  from  her  husband,  insti- 
tuted proceedings  for  a  divorce,  and  obtained  a 
decree  nisi  for  dissolution  of  their  marriage.  On 
September  13,  1808,  before  decree  became  absolute, 
A.  S.  Lloyd  died.  After  separating  from  her  hus- 
band, defendant  continued  to  manufacture  and  sell 
Lloyd's  Euxesis  on  her  oavu  account,  and  plaintilf 
had  dealt  with  lier.  A.  S.  Lloyd's  estate,  proving 
insolvent,  was  administered  in  the  court  of  chan- 
cery, and  the  good  will  of  the  business  and  such 


A^Tiox  (Cause  of)— Adoptiox. 


nn 


right    as 


he  had  to  the  trademark  "Lloyd's 
Euxesis''  was  fold  to  the  i)huiitift'  under  a  dccicc 
of  the  court.  The  secret  of  nialviiig  tlie  Kiixcsis 
was  comiuunicated  to  plaintilT  l)y  a  person  in  A.  S. 
Lloyd's  employ.  Held^  tlmt  A.  S.  Lloyd  nc^t 
Irivinn'  had  any  title  to  the  trademark,  defendant 
c<v,ild  not  be  I'estrained.  If  A.  S.  Lloyd  had  liad  a 
titl(^,  defendant  could  be  enjoined,  even  if  she  was 
his  wife.  1870,  Yice  Cli.  Bacori's  Ct.^  Hovenden  /•. 
Lloyd,  18  WeeJclj/  R.  \\^2. 

i  104.  It  is  the  actual  use  of  a  trademark,  af- 
lixed  to  the  merchandise  of  the  manufacturer,  and 
this  alone,  which  can  impart  to  it  the  element  of 
properly.  See  J^  24.  1870,  Supreme  Ct.  of  Illi- 
nois, Candee  (\  Deere,  54  III.  489 

See,  also,  Assignment;  Paetnersiup. 


%] 


% 


ACTION  (Cafse  of). 

As  to  what  constitutes  a  good  cause  of  action, — 
see  Cause  of  Action;  Imitation;  Name; 
Words  ;    I*ublications  ;    Partnership  ;    cS:c. 


ADMINISTRATORS  AND  EXECUTORS. 

See  §§  50,  71,  85,  99,  001,  791,  904. 


ADOPTION. 


See  Acquisition. 


34 


Advehtisemi^xts — Aliens. 


ADVERTISEMENTS. 

When  the  publication  of  advertisements  will  be 
enjoined.    See  Publications. 


AGENT. 
See  §§  224,  472,  7G8,  873. 


ALIENATION. 


See  Assignment. 


ALIENS. 

§  110.  In  an  action  for  the  violation  of  a  trade- 
mai'k,  it  makes  no  difference  that  tlie  comj>lainants 
are  aliens ;  in  the  courts  of  the  United  Smtes  alien 
friends  are  entitled  to  the  same  i)rotection  in  their 
rights  as  citizens.  1844,  U.  S.  Cireitlt  Ct.  Mass., 
Taylor  v.  Carpenter,  3  Story,  458. 

§  111.  The  alienage  of  the  x^erson  whose  trade- 
marks are  simulated,  nor  the  fact  that  he  resides 
abroad,  does  not  alter  his  right  to  be  protected  in 
their  exc^lusive  use  in  this  country.  184i5,  Vice  Ch. 
Sandfoud,  Coats  «  Holbrook,  2  Sandf.  Ch.  586 ;  S. 
C,  3  N.  Y.  Leg.  Obs.  404. 

§  112.  The  fact  that  complainant,  in  a  suit 
in  equity  to    restrain   the  fraudulent  use    of    a 


Aliens. 


33 


trndfinark.  is  a  subjccf  of  a  foreign  govt^'iiiiient, 
(loos  not  aliVct  tlio  riu-lifs  of  I  lie  parties.  Tin;  lionor 
oi  our  f'ountiy  and  the  chai'acter  of  its  juris[)iii- 
(leiice,  for1>i(l  that  justice  or  equity  should  ever  be 
iidniinisiered  on  such  narrow,  prescriptive,  and 
in(^(piital)le  pi-incii)les  as  to  recognize  a  different 
i-ule  of  right  and  Justice  between  any  class  of 
suitors.  184(5,  /Y.  r.  Ot.  of  Errors,  Taylor  <\  Car- 
penter, 11  P<U!/c,  2\)2\  S.  C,  2  ^(Oul/.'iJk.  00:J. 

^  li:j.  Ail  alien  friend  may  bring  an  action  in 
the  courts  of  the  United  States  for  damages  sus- 
tained by  reason  of  the  pirati(!al  use  of  his  trade- 
maiks.  lie  can  bring  in  our  courts  any  action  for 
the  violation  of  his  trademarks  wliicli  a  citizen  can. 
bS4(),  U.  K  Circuit  Ct,  JJa.ss'.,  Taylor?).  Carpenter, 
2  Woodb.  dc  If.  1. 

^  114.  Aliens  have  the  same  rights  as  citizens  in 
respect  to  the  jirotection  of  their  trademarks. 
184!),  U.  S\  Circ.  Ct.  [ml.,  Coil'een  «.  Brunton,  4 
McLean,  51(5. 

§  Hi).  A  foieign  mannfacturer  has  a  remedy,  by 
suit  in  England,  for  an  injunction  and  an  account 
of  ]m)lits,  against  a  manufactnrer  in  England,  who 
has  commit  ted  a  fraud  upon  him  by  using  his  trade- 
mark for  the  purpose  of  inducing  tlie  public  to 
believe  that  the  goods  so  marked  were  manufac- 
tured by  the  foreigner.  This  relief  is  founded  upon 
the  damage  caused  to  the  plaintilf  by  the  defendant's 
fraud,  and  exists,  although  the  plaintiff  resides  and 
cari'ies  on  liis  business  in  another  country,  and  has 
no  establishment  in  England,  and  does  not  even  sell 
his  goods  in  that  country.  18o7,  Vice  Ch.  Wood, 
Collins  Co.  V.  Brown,  3  Kay  and  J.  428 ;  S.  C,  3 
Jurist  N.  8.  929,  Collins  Co.  v.  Co  wen,  3  Kay  and 
./.  428 ;   S.  C,  3  Jurist  N.  8.  929  ;  Collins  Co.    v. 


% 


m 


'm 


i-f     ;!!' 


^^»fm 


30 


ASSIGNMP]NT. 


Reeves,  1859,  Vice  Cli.  Stuaut^,  28  Lc(m  Jour.  R. 
Ch.  50. 


APPROPRIATION. 


See  AcQUISITIo^^. 


.1 


ASSIGNMENT. 

§  120.  An  injunction  was  granted  where  tlie  de- 
fendant, having-  sold  a  medicine  tc  the  plaintiff,  set 
np  another  under  a  similar  1  .scription,  and  in  his 
advertisement  adopted  verses  which  had  been  at- 
tachetl  to  the  original  medicl.ie.  1811,  Rolls  Court., 
Sedon  ri.  Senate,  Eden  on  hijunctlons,  1st  Am. 
Ed.  220. 

§  121.  T.  took  out  letters  jjatent,  which  expired 
in  1844,  for  the  manufacture  of  solid  headed  pins 
and  carried  on  the  business  under  the  firm  name  of 
T.  &  Co.  until  1888.  In  such  business  T  used 
parti-colored  labels,  in  pink  and  green,  in  which  the 
pins  were  described  as  "  patent  pins,"  "exclusively 
nianui'actured  by  T.  &  Co."  ;  and  had  engraved 
plates  and  blocks  for  striking  off  such  labels.  In 
1888  T,  assigned  the  letters  j^aient,  together  with 
his  business  and  good  will,  and  the  right  to  use  the 
plates,  labels  etc.,  and  the  name  of  "  T.  &  Co."  to 
S.  In  1880  S.  became  bankrupt.  His  assignees  car- 
ried on  tlie  trade  until  1841,  Avhen  they  agi-eed  to 
assign  the  business,  patent,  x>l^tes,  labels,  &c.,  and 
the  right  to  use  the  name  of  ''  T.  &  Co."  to  E,  the 


I 


a 
c 


Assignment. 


37 


l)liiiiirilT.  wlio  ever  since  fiirned  on  the  bHsiiirs.>  mc- 
coidiiiuly  nnd  used  the  snid  hibds.  In  IS."):}  K.  dis- 
(•()V»'i'ed  thjit  v.,  tli*>  d('i'eii(l:int,  was  iisiiiu"  labels  in 
pal]>al)le  imitation  oi'  the  j)lalntiirs.  ////</,  iliai  K. 
was  ('iititliid  to  I'cstrain  such  i)alpal)le  iniltalioii  hy 
\'..  hilt  Ihat  Vj.  liad  no  <'X('lnsive  rl,uht  to  llie  use  of 
tliH  name  of  T.  That  V.  was  not  to  he  jir«'clu<lcd 
alt().^■ethel•  from  representinji;  tliat  liis  pins  wcn' 
manufactured aecoiding  toT's  i)atent  (nowc.\[)in'd  i, 
hut  he  was  not  to  do  so  in  a  manner  liable  to  mis- 
lead. 18:);5,  Vice  Ok.  Woo(l\s'  CL,  Edelston  /•.  \i.]<. 
11  Hare,  78;  S.  C,  ISJurtd,  7;  S.  C,  23  Eii'j.J.aw 
and  Kq.  51. 

^  V2'2.  The  assignee  of  the  wliole  rit^ht  in  a 
trademark  and  of  the  pi'oi)erty  in  the  i^'oods  t(; 
which  it  is  attached  is  entitled  to  wliatever  ])ii\i- 
lege  the  law  accorded  \o  his  assignor  in  the  ] (obses- 
sion and  use  thereof,  and  may  maintain  an  actiou 
in  his  own  name  for  any  wrongful  use,  by  others, 
of  sucli  ti'aderaark.  ISHC),  ^Valton  r.  Ci'owley.  3 
BJaU'hf.  a.  a.  440  {U.  K  Circuit  CL  K.  T.). 

I  J  23.  Wliere  plaintiJf  claimed  the  right  to  rhe 
use  of  ji  ti'adeuiark  as  assignee  by  purchase,  it  was 
7/("/r/,  that  he  could  not  enjoin  the  sale  of  goods  tn 
which  the  trademark  Inul  been  attached  by  its  orig- 
inal owner  prior  to  the  i)iirchase  thereof.  18.")(),  N. 
Y.  Hitprcme  Ct.  R  7\,  Samuel  r.  Berger,  24  />V//7>. 
1(i3;  S.  C.   13  I/oic\  Ft.   342;  S.  C,   4  Abb.  Pr. 

§  124.  Wliere  the  lease  of  a  bakeiy  witli  the 
tools,  ilxtures,  etc.,  and  also  the  good  will  of  the 
business  of  baking,  then  or  previously  cari'ied  on 
at  such  place,  liad  been  sold  and  assigned  witli  a 
covenant,  by  the  vendor,  not  to  carrj'  on  the  busi- 
ness in  the  same  city  himself,  it  was  Jield  tluit  the 


>  ,5,  , 


■fit; 


is 


■ml 


i 


«l 


■■',  s  i 


38 


AsSIGNiMEXT, 


purchaser  did  not  acquire  the  right  to  use  the  name 
of  the  assignor  in  the  conduct  ol'  tlie  business  at 
the  same  phice,  nor  to  designate  oi'  desciibe  tlie 
])akei\v  (by  signs  tliereon  or  otheiwise)  by  the  name 
ol'  liis  vendor.  18(30,  iV.  Y.  .Sff/My/or\.'/.  G.  7'., 
Howe  V.  Searing,  10  IIow.  Pr.  14  ;  S.  C,  10  Abb. 
Pr.  2G4  ;  S.  C,  0  Bosw.  354. 

^125.  Where  the  i^kdntiff  sold  to  the  dei'end- 
ant's  assignor  Ids  lease  of  llie  pi'ennses,  ;No.  4:52 
Bi'oadwav,  New  Yoil<.  known  I'V  the  name  ol 
"Howe's  Bakery,'' and  stock  in  tinde,  Avith  thi; 
good  will  ol'  the  business  ol'  baking,  now  or  liereto- 
I'ore  ciirried  on  by  liim  in  the  city  ol  New  York  : 
Ib'lil.,  tliat  the  plaintiif  was  entitled  to  ;in  injunc- 
tion, to  resti'ain  the  defendant  from  designating 
such  bakery  estal)lishment  as  "'Howe's  Hakerv," 
and  from  otherwise  using  the  name  of  "  How*'"'  in 
tile  business,  so  as  to  induce  tlie  public  to  be- 
lieve that  the  business  carried  on  at  482  Hioadway 
was  conducted  by  Howe.     J  bid. 

^  120.  It  is  doubtfnl  if  the  right  of  using  a  mere 
trademark,  by  itself,  can  be  transferred  like  a  copy- 
right, so  as  to  make  wares,  not  yet  in  existence, 
tlie  sid)ject  of  them,  and  the  injury  to  an  assignee 
of  it,  greater  or  less  by  the  use  of  it  by  others. 
The  imitation  of  a  trademark  is  entirely  a  pei'scmal 
injury  ;  it  is  merely  passing  oil  the  wares  of  the 
imitator  as  being  those  of  the  party  injiii'ed.  How 
can  the  reliiupiishment  by  the  assignor  of  his 
trademark  prevent  the  rest  of  tlie  woi'ld  from  using 
that  trademark  to  distinguish  tlieir  Avares  '.  On  the 
other  hand,  although  a  name  has  been  used  by  any 
one  as  a  traih'niark,  and  is  susce]  tible  of  being- 
used  as  such,  its  pi'evious  employnient  by  him  does 
not  x^'event  any  one  else  from  emxiloying  it  to  des- 


Assignment. 


39 


:f. 


ignate  their  wares.  It  is  wholly  iniinaterial  liow^ 
miu'h  or  how  long  a  word  has  ])een  employed  as  a 
trademark.  The  employer  of  it  can  neither  give 
any  special  right  to  another,  norabandcm  it  to  the 
community  so  as  forever  to  take  away  the  right  of 
emph)ying  it  to  designate  his  Avares.  If  he  can,  the 
iii'st  use  of  a  trademark  gives  a  common  law  ])er- 
petual  copyi'ight  in  it.  Ohitei\  lloiSKin.^o.N,  J.,  ISOO, 
N.  Y.  Superior  CL,  G.  T.,  Corwin  i\  Daly,  1  Bohii\ 
2*22. 

i^  127.  If  a  name,  impressed  upon  a  vendible 
commodity,  glasses  current  in  the  marivet  as  a  lep- 
resentation  that  the  commodity  has  l)een  manufac- 
tured by  a  i)articuhu' person,  this  coui't  would  nor 
transi'er  to  anotlnu'  pei'son  the  light  to  use  the  nanu; 
sim])ly  and  Avithout  addition;  ))ut  if  it  sold  tlie 
business  carri(>d  on  by  the  owner  of  the  nanu\  it 
might  give  to  tlie  i)urchaser  the  light  to  represent 
himself  as  the  successor  in  the  business  of  the  iirst 
maker,  and  in  that  manner  to  use  the  name.  Where 
a  name,  once  allixcMl  to  a  manufactured  article, 
continues  to  l)e  used  after  the  death  of  the  manu- 
facturer, the  name  in  time  becomes  a  more  trade- 
mark or  sign  of  quality,  and  ceases  to  d(Miote  or  be 
current  as  indicating  that  any  pai'ticular  person 
was  the  maker,  and  can,  tlierefoie,  be  sold  witli 
the  business,  and  will  be  protected  in  a  court  of 
equity.  ISO:),  Before  Lord  Cii.  \VKsTnrnY,  on  ap- 
peal. Hall  y\  J]a]Tows,  \V.\  Law  J,  (iV.  >sV)  Vh.  2<»4; 
H.  C,  0  L(m  T.  {X.  X)  501  ;  8.  C,  12  WrrkJ;/  B. 
:522;  S.  C,  WJ//r/.sf{xY.  >SV)  Tnj ;  ivversing  «.'c.,  0 
J/rr/H  (.Y.  >S'.)  4S:^,  U  Wcc/d//  R.  52."),  8  L.  T.  {N. 
X.)  227,  H2  Lam  J.  {N.  ^.)  i'h.  oJS. 

^  128.     A  corporation  ti'atlemark,  granted  by  the 
Cutler's  Company,  undei"  the  various  acts  of  I'ar- 


40 


AssiGx:\rEXT. 


liiiiiiont  i'o,£^ii]atin,£>' the  company,  to  a  non-fi'eeiium, 
is  a.s.signu])lc' ;  but  wlietlier  such  a  mark  ^'i-aatcd  tt> 
a  fivonuni  is  assi<j,'iial)le,  qitucrc.  1804,  (J Ji.  (!L  of 
A[>i)<(!l,  ]>ury  t\  Ijedi'ord,  to  Jurist  (iV.  S.)  0(.);] ;  S. 
C,  )Vo  Law  ./.  {N.  X.)  Ch.  40.1 ;  S.  C,  12  WccJcbj  U. 
720  ;  S.  C,  10  L.  T.  {N.  .s^)  470  ;  «.  C,  4  New  JL  180  ; 
revei'sin^^  S.  C,  11  WceJchj  IL  1)78  ;  S.  C,  8  Law  T 
{N.  X)  i^-7;  S.  C,  ;i->  yyrt?o  J.  Ch.  {N.  K)  7M 
C,  0  Ja?/.<jl  (xY.  .S.)  'J:)0  ;  S.  C,  1  New  Ji.  5. 

^  1"J0.  li*  a  pei'soiial  trademaik  be  in  any  respect 
less  assi^•na])]o  tlian  one  ret'emn2f  to  locality  only, 
()!•  to  a  mere  device,  the  distinction  mast  be  limited 
to  cases  where  tlie  mark  is  so  clearly  personal  as  to 
i/Miwrt  that  t'le  i;'()ods  bearing  it  are  manulactiwed 
b}^ a  particular  person;  and,  ,s'e//<'^y/c,  even  in  tliat 
case,  tile  objection  is  i-ather  to  the  right  oi"  using  the 
mark  than  to  its  assignable  quality,  1804,  Bury  «. 
Bedford,  //>/>/. 

§  1130.  J.  13.,  being  a  non-freeman  of  the  Cutler's 
Company,  acquired  b}' grant  from  that  com])aiiy  a 
corporate  tratlemark,  consisting  of  the  iigiire  of  a 
lion  and  the  hMlersJ.  B.  O.  S.  ;  he  also  acvpiired 
by  purchase  fi'om  William  Ash,  (he  right  to  tlie  ex- 
chisive  use  of  the  tiademark  *'\Vm.  Ash  <S:  Co." 
He  subsequently  entered  into  parlnersliip,  and  by 
the  articles  tlien  executed,  it  was  agived  that  the 
corporate  trademark,  used  with  such  other  mark  as 
might  be  agreed  upon,  should  be  a  partneiship  as- 
set. It  was  also  agreed  that  at  the  expiration  of 
the  partnership,  the  several  partners  should  iiave 
the  free  use  and  enjoyment  of  the  corporate  ti:ule- 
mark  for  tlu!  remainder  of  their  lives,  either  alone 
or  in  partnerslnp  Avith  any  other  persons.  The 
lirm,  after  carrying  (m  business,  in  the  course  of 
which  both  the  corporate  trademark  and  the  mail; 


ASSIGXMEXT. 


41 


"  Wni.  Asli  &  Co,"  were  used,  fell  into  difiiculties, 
iind  the  pai'tners  assigned  all  ♦:heii'  estate  and 
eU'ects,  both  joint  and  sepai'ate,  to  trustees,  upon 
the  usual  trusts  i'or  creditors.  By  the  deed  the 
trustees  were  enipoweved  to  sell  the  trade,  &(•.,  as  Ji 
going  concern.  They  accordingly  al'terwards  sold 
the  concern  to  II.  B.,  and  assigned  to  him  the  part 
nership  property,  and  the  corporate  trademark  and 
the  otlier  marks  of  the  linn,  so  far  as  they  lawfidly 
could.  Shortly  afterwards,  J.  ]'.  entered  into  an 
anangoment  with  B.  &  Co.,  by  which  he  author- 
ized them  to  use  the  coi'porate  mark,  and  he  also 
used  the  corporate  mark  and  tlie  niai'k  "  \Vm.  Ash 
&Co.,"  himself.  Thereupon  II.  I'.,  hied  a  bill  to 
j'estrain  him  from  so  tloing,  and  the  loids  justices, 
on  ap})cal  from  the  decision  of  Ihe  master  of  the 
rolls,  //(Id,  that  the  plaintilf  was  entitled  to  the 
exclusive  use  of  boUi  trademarks,  and  granted  au 
injiinclioii  accorc 


linub 


o' 


l/,i(/. 


§1:>I.  Although  a  tradev  may  have  a  pi'operty 
in  a  trademark,  giving  him  a  right  to  exclude  all 
others  fi-om  using  it,  if  his  goods  derive  their  in- 
creased value  fiom  (h(^  personal  skill  or  ability  of 


I  he  a(lo[)tei' ()l  the  trademark,  lie  cannot  give  any 
other  person  the  right  to  alhx  his  name  or  mark  up- 
on their  goods,  for  the  ell'ect  thereof  Avould  be  to 
give  them  the  right  to  practice  a  Iraud  upon  the 
l)ubiic.  18(m,  honsc.  of  Lords,  Leathei'  Cloth  Co. 
(limited)  r.  The  Amei'ican  Leather  Cloth  Co.  (lim- 
ited), ;C)  L(tw  J.  {X.  N.)  Ch.  n;};  S.  C,  n  House  of 
Lords  rV/.v.  .^)2:?;  S.  C,  i;3  Wvekh/  If.  87:};  8.   C, 

II  Jurist  {X.  S.)  rA'l-  S.  C,  12  L.  T.  U.  (A^  .S'.) 
M-i  :  S.  C,  (i  X.  ]{.  201) ;  alliiuiing  S.  C,  W,]  />.  J. 
(A.  >'.)  (;//.  IJJl):  PJ  Wcekh/ li.  )>^\)  \  \()  .lurisl{N. 
>^\)  81 ;  S.  C,  S)  L.  T.  R.  {X.  H.)  038  ;  and  lo versing 


■■".s 


42 


ASSIGN^EEXT. 


S.  C,  1 IL  &  3L  271  ;  S.  C,  32  Laio  J.  (iY.  S.)  Cli. 
721  ;  S.  C,  11  Wecidy  11.  9:31  ;  S.  C,  8  L.  T.  {N. 
i^.)  829. 

§  i;>2.  Sciithle,  per  Lord  Cijaxwouth.  —  The 
right  lo  a  1 1'aih'iuai'k  is  ii  right  closely  resembling, 
though  not  exactly  the  .same  as,  copyj'iglit.  The 
right  which  a  maiiul'acturer  has  in  his  ti-ademark  is 
the  exclusive  right  to  use  it  i'or  the  pni'pose  of  in- 
dicating wheie,  or  by  whom,  or  at  Avhat  manui'ac- 
torv,  the  arti<'le  to  which  it  was  alUxed  was  inanu- 
i'actui'ed.  Tlie  right  to  a  trademark  may,  in  gen- 
eral, tieating  it  as  pro]iei'ty,  or  as  an  accessory  of 
property,  be  sold  and  transfeiied  upon  a  sale  and 
transfer  of  the  manufactory  of  the  goods  on  which 
the  mark  has  been  used  to  be  allixed.  and  may  l)e 
lawfully  used  ))y  the  puichaser.  Ditliculties,  how- 
ever, m;iy  arise  where  the  ti'ademark  consists  mere- 
ly of  tlie  name  of  the  manufactuier.  AVhen  he  dies, 
those  who  succt^ed  him,  though  thev  mav  not  beai' 
the  same  name,  yet  ordinarilv  continue  to  use  the 
original  name  as  a  trademaik,  and  they  would  ]>e 
protected  against  any  iid'iingenient  of  the  exchisive 
right  to  that  inarlv.  They  would  be  so  protected, 
because,  according  to  the  ustiges  of  trad(\  they 
wonld  be  understood  as  meaning  no  moie  by  the 
use  of  their  i)redecessors  n  ime  than  that  they  were 
carrying  on  the  manufacture  formerly  cari'ied  on 
l)y  him.  IS'or  would  the  case  be  necessarily  dill'er- 
eiit  ii',  instead  of  passing  into  other  hands  by  devo- 
lution of  law,  the  manufactory  were  sold  and  as- 
signed  ton  purchaser.  The  cpiestion  in  eveiy  such, 
case  must  be,  whel  her  th(»  piu'cliaser,  in  continuing 
the  use  oT  the  origimd  trademark  would,  according 
to  the  oi'dinary  usag'es  of  trade,  be  understood  as 
saying  more  than  that  he  was  carrying  on  the  same 


A.SSIGXMLNT. 


43 


business  as  liiuT  ht'.m  roiincrly  cnrricd  on  by  tlio  pp]-- 
son  Avhosc  iinme  coustitiilcd  iIk^  ti'ndemni'k.  In 
siicli  a  <'as(i  tlici'c  is  iiotliiii;;-  t(»  make  il  iniproper 
for  the  ])i!i'('lias<'i' to  usc>  lliv  old  ti-adeaiark.  as  llic^ 
mark  would,  in  siicli  a  case,  indicate  only  (iait  tin' 
floods  so  niai'ked  v,e\v  made  at  the  nKinuractory 
Avhich  li(!  had  ])U]"cliascd.     / h/'f/. 

^  l;];].  !<(iiLi)h\  j)er  Lord  Kin(;sj>ow>:. — A  ti-adei' 
may  mark  liis  own  manni'actiiro  either  hv  his  name 
or  i)V  usiau' anv  svmbol  or  emblem:  and  if  such 
svmbol  or  einblenj  comes  by  nse  to  l)e  lecounized 
ill  tiade  as  the  marlv  of  the  u'oods  oL'  such  trader, 
no  other  iiiidei'  lias  a  ri<i'lit  to  stamp  it  n])on  liis 
goods  of  a  similar  d(\scrii)tion,  and  as  the  nsage 
oi'  tradtj  does  not  conliuo  tlie  name  of  a  iirm  to  the 
original  partners oidy,  but  extends  it  tosuhseipient 
l)artners  and  transferees,  the  nse  of  the  traden.ark 
b\'  the  new  jjartners  or  successois  of  the  original 
adopters  is  no  fiand  n'pon  tlie  ]»ublic,  l)ut  only  a 
statement  that  tlie  goods  are  the  goods  of  tluMirm 
whose  trademark  they  bear.  It',  liowever,  tlui  trader- 
mark  contains  statements  matei'ially  allecting  the 
value  of  tlie  goods,  such  statements  mnst  be  judged 
as  if  made  in  se]iai'ate  ]al)elso]'  advertisemenis  ;  the 
test  beinu'  whether  thev  aic  malei-ial  misstatements 
and  calculated  to  deceive  tlie  i)id)lic.      I  hid . 

%  131.  Where  a  trademark  contained  an  emblem, 
with  sneh  a  collection  of  words  as  amounted  to  an 
advertisement  of  the  character  and  (pudity  of  tln^ 
goods,  and  contained  slatements,  which,  though 
true  as  regarded  the  original  adopter  of  the  trade- 
mark, A\ere  ca'ciilated  to  deceive  the  publii-  when 
used  by  his  ass*giie(.%  the  assignee  was  held  not  to 
be  entitled  to  pi'otection  in  the  use  of  such  trade- 
marli.     Ibid. 


m 


I 


44 


ASSIGXMEXT. 


§  18.").  A  general  assignmenf  in  insolvenc^y  lield 
inoperative  in  regard  to  conveying  a  right  to  a 
trademark,  wliere  siu'li  trademark  was  not  iiiven- 
toried  l)y  the  trustee  or  a[)[)raisers,  and  liad  never  ' 
been  ckiimed  ])y  creditors  of  tlie  insolvent,  or  the 
trustee,  nor  disposed  ol;  in  any  manner  under  the 
assignment.  1805,  Supreme  Court  of  Conn., 
Bradley  i\  Norton,  3  Conn.  loT. 

i^  liU).  Inasmuch  as  tlu?  cojii't  protects  the  owner 
of  a  trademai'k,  lie  is  entitled  to  authorize  another, 
when  h(;  hands  over  his  business  to  him,  to  place 
that  mark  oii  his  goods.  That  is  a  right  which 
being  xn-otf^cted  by  the  court  of  chancery,  may  be 
disposed  ol'  for  value,  may  be  bought  and  sold,  and 
is,  therefoi-e,  in  that  sense  of  the  word,  pro[)erty. 
18()(),  Wood,  V.  C,  in  xVinsworth  v).  AValmsley, 
Lam  It.  1  Eq.  518;  S.  C,  12  Jurist,  N.  K  205; 
S.  C  14  W(ic/.-7//  It.  :J0;J;  S.  C,  \\  Law  TlmeH, 
N.  X  220;  S.  ().',  ;r)  Imw  Jonrnat  {N.  S.)  Cli.  Xfi. 

%  137.  All  who  use  trademarks,  indicating  that 
the  articles  were  originally  manufactuivd  or  owned 
by  others,  are  practicing  an  imposition  on  the 
public.  Every  assignee  and  purchaser,  who  uses 
the  tradenuu'k  of  the  original  proprietor,  witlnmt 
indicating  that  he  is  the  assignee  or  purchaser,  is  in 
this  position  ;  and  thus  an  article  which,  by  i-eason 
of  the  skill  and  integrity  of  the  original  proprietor, 
has  justly  acquired  ;i  reputation  which  insures  the 
sale  of  the  article  at  a  large  profit,  is,  by  aid  of  the 
courts,  permitted  to  be  adulterated  and  -old.  by 
some  dislionest  assignee  of  the  trademarlv,  as  ninde 
by  the  original  owner.  Thus  the  j)ublic,  which  the 
courts  are  so  zealous  to  protect  against  the  frauds 
:nid  imp(»sitionsof  cme  class,  are  handed  over  to  the 
tendi})'  mercies  of  a  more  dangerous  class,  with  the 


Assignment. 


45 


license  and  exclusive  indorsement  of  a  court  of 
equity;  and  the  confiding  pul)lic  pay  an  extra 
price  Tor  a  mixture  of  clialk,  IVne  and  lead,  labeled 
"  A.  B.  Pui'e  White  Lead"  or  for  a  mixture  of  In- 
dian meal,  turmeric  and  mustard,  labeU'd  "  C.  I). 
Pure  Mustard."  By  what  i)rocess  the  assignees 
and  legal  ]'e]n'eseutatives  of  a  manufacluicr  or 
trader  are  inoculated  so  as  to  have  the  skill  and  in- 
teiiiilv  of  the  original  owners  of  the  trademark  as- 
signed  to  them,  is  not  disclosed.  As  there  is  no 
American  case,  so  far  as  I  am  advised,  Avhich  sanc- 
tions this  doctrine,  .  .  .  ;ind  until  il:  cww  be 
shown  that  skill  and  integrity  can  be  ti'aiislVrred 
l)odily  fi'om  man  toman,  or  descend,  like  goods  and 
chattels,  to  personal  representatives,  I  shall,  most 
emphatically,  repudiate  the  authority  of  cases  not 
in  harmony  with  equitable  principles.     .  .     I 

do  not  deny  that  the  right  to  use  the  trademark  of 
the  original  xn-oprietor  passes  with  the  good  v.ill,  by 
operation  of  law,  to  the  executor  and  to  the  as- 
siii'uee  of  a  bankrupt,  and  that  it  may  ]kiss  to  an 
assignee  by  express  agreement  l)etw('en  the  parties. 
But  I  insist  that,  in  such  cases,  in  ordei' to  I'eceive 
the  aid  of  a  court  of  equity,  the  i)arties  must  add 
to  the  (uigiual  trademark  words  indicating  the  au- 
thorit,y  for  and  right  to  use  as  executor,  assignee  or 
successor  of  the  original  proprietor,  as  the  case 
may  l)e.  In  other  Avords,  assignees  of  trademarks 
have  no  si)ecial  privilege  of  sailing  under  false 
colors,  and  if  they  will  ])orsist  in  doing  so,  |)rudence 
would  dictate  that  I  hey  give  courts  of  equity  a 
wide  Ivrth.  1800,  AVilsox,  C.  d..  >^iipn-ior  CL  of 
ClilcctfH),  Sherwood  r.  Andrews,   f)  .1//^   Lato  lliuj. 


kn. 


, )  i>88. 


§  138.    The  purchaser  of  a  tradem;iik  is  not  pre 


I'. 


46 


Assignment. 


chuled  from  enjoining  agninst  its  piracy  by  reason 
of  his  being  only  tlie  assignee,  nor  by  liis  use  of  it 
without  designating  liiniself  as  assignee.  18G7, 
Superior  Vt.  l^ciui.,  Fulton  v.  Sellers,  4  Brews. 
42. 

§189.  A  suit  was  instituted  between  B  and  11  as 
to  the  propiietorship  of  a,  newspaper,  in  Avhich  it 
was  ultimate  y  decided  that  tliey  were  entitled  in 
equal  moieties.  During  the  progress  of  the  suit  B 
assigned  his  share  in  tlie  newspaper  and  the  right 
of  juiblicatiou  and  in  tlie  yn'oiits  thereof  to  \V. 
The  assignment  contained  a  recital  of  the  jiioceed- 
ings  in  the  suit,  and  a  power  of  sale.  Afterwards 
B  mortgaged  tlie  same  share  to  his  2~)artner  II  to  se- 
cure sums  due  to  H  in  respect  to  that  share.  W 
registered  his  assignment  at  Stationers"  Hall  under 
the  provisions  of  the  copyright  act,  and  subse- 
quently sold  the  mortgaged  share  to  the  plaintiff 
under  his  power  of  sale.  Both  W  and  the  plain- 
tilf  permitted  the  newspaper  to  be  carried  on  by  B 
and  H  jointly.  On  a  bill  iiled  by  the  x>l^ii^tiff  for 
a  declaration  that  he  was  entitled  to  a  moiety  of  the 
newspaper,  Held,  iirst,  that  there  is  nothing  ana- 
logous to  copyright  in  the  name  of  a  newspaper, 
antl  therefore  the  I'egistration  of  the  assignment  at 
Stationers'  Hall  was  futile,  luit  that  the  proprietor 
has  a  right  to  j^revent  any  other  person  from  adopt- 
ing tlie  name,  and  that  this  right  is  a  chattel  capa- 
ble of  assignment.  Secondly,  that  as  AV  and  the 
plaintiff  knew  of  the  suit  between  B  and  II,  and 
also  permitted  them  to  carry  on  the  newspaper  as 
partners,  the  pi  a  in  till'  could  only  takes  B\s  share, 
subject  to  the  equities  subsisting  between  the  j>art- 
ners.  The  decree  of  Stuaut,  V.  C,  varied.  1808, 
before  the  Lords  Justices,  Kelly  w.  Hutton,  L.  R.  3 


ASSIGXMEXT. 


47 


I 


f 


Ch.  703;  S.  C,  10  L.  T.  R.  {N.  Si.)  2'2S  ;  S.  C,  1(5 
TF.  7?.  1182;  S.  C,  />^7<>w,  17  />.  7'.  7^.  (iY.  *s'.)  592  ; 
and  see  S.  C,  i^o  /v.  71  7^.  (/T.  .SV)  i^Ol. 

>j  141).  Tliere  is  a  right  of  property  in  n  trademarlv 
whicli  iscnpable  of  beini^;  ti'aiisferred  to  another  ))y 
;-!ssi,i,niiiient.  1800,  JY.  V.  t'omiiioii  Pleas,  S.  7'., 
Lockwood  r.  IBostwick,  2  Dal//,  o-il, 

^^  141.  Where  the  wood-cuts  of  a  tradeniaik  are 
sold,  siicli  transfer  does  not  carry  tlie  i)]'operty  in 
the  trademark  itself,  unless  the  circumstances  indi- 
cate that  sucli  was  the  intention.  1800,  A\  Y.  Com,. 
Fleas,  ^'.  7'.,  Lock  wood  d.  Bostwick,   ih/d. 

g  142.  In  substance  there  is  no  distinction  be- 
tAveen  the  sale  of  a  business  and  good  will  }>y  a 
trader  himself,  and  a  sale  l)v  his  assignees  in  bank- 
I'uptcy.  Tiierefore,  (m  a  sale  of  a  l)usiness  l)y  a 
trader's  assignees  in  bankruptcy,  the  trader  lias  no 
right,  upon  setting  up  a  fresh  business  after  his 
discharge,  to  use  the  trademarks  of  his  old  lousi- 
ness, or  in  any  other  way  to  I'epresent  himself  as 
carrying  on  the  identical  business  which  was  sold, 
although  ho  has  a  right  to  set  up  again  in  business 
of  the  same  kind  next  door  to  his  old  ])lace  of  lousi- 
ness. In  such  [I  case,  it  is  no  objeciion  to  the  pur- 
chaser coming  for  the  assistance  of  a  court  of  chan- 
cery, that  he'  has  continued  to  use  the  name  of  the 
old  business  which  he  found  there.  1800,  TVcc^  Ch. 
James,  Hudson  v.  Osborne,  30  Laio  J.  {N.  ^,) 
Ch.  70  ;  S.  C,  21  Law  T.  U.  (iY.  .S'.)  380. 

§  143,  The  joroperty  in  a  trademark  will  pass  by 
assignment,  or  by  operation  of  law,  to  any  one  avIio 
takes  at  the  same  time  the  right  to  manufacture  or 
sell  the  particidar  merchandise  to  which  said  trade- 
mark has  been  attached  ;  there  is  no  property  in  it 
as  a  mere  abstract  right.     1870,  Ct.  of  Com.  Picas, 


^Cjcjg, 


48 


ASSIGNMEXT. 


Phil.  Pa.,  Dixon  Crucible  Co.  /).  Guggenheim.  2 
Brewster,  ;J:21  ;  S.  C,  7  Pk/la.  408. 

§  144.  Tlie  plnintiir  and  the  defendant,  Reul)en 
P.  Hall,  were  in  [)artnei'.ship,  under  the  name  of  R. 
P.  Hall  &  Co.,  in  the  business  of  making  and  sell- 
ing a  prepaiation  called  "Hall's  Vegetable  Sicilian 
Hair  llenewer."  Defendant  sold  to  tlie  plaintiff  all 
his  interest  in  the  tirni,  in  the  secret  of  snid  pre- 
paration, tlie  right  to  make  and  vend  the  same,  and 
the  exclusive  right  to  use  his  name  therefor  in  the 
future  sales  th(3reof,  and  he  also  covenanted  not  to 
use  or  allow  his  name  to  be  used  in  the  pre[)aration 
of  any  similar  ai'ticles,  or  to  engage  in  the  manu- 
facture thereof,  and  that  he  would  allow  the  plaintiff 
the  exclusive  use  of  his  name  in  the  mnnufacture 
and  sa](j  of  said  prejKiration.  Held,  that  defendant 
would  be  enjoined  from  making  or  selling  any  pre- 
paration as  and  for  those  of  the  plaintili,  and  from 
using  the  name  of  Hall,  or  R.  P.  Hall,  or  Renlien 
P.  Hall,  either  singly  or  in  connection  with  others, 
but  that  defendant  would  not  be  enjoined  from 
making  pre])ai'ations  for  the  hair,  provided  he  did 
not  use  the  name  of  Hall  therefor.  1870,  CY.  of 
Comnion  Pleas,  Philadelphici,  Pa.,  Gillis  ?;.  Hall, 
2  Brewster,  843  {Pet/n.). 

§  145.  A  trademark  may  be  devised  and  adopted 
by  the  party  himself,  or  he  may  acquire  it  by  pur- 
chase from  his  predecessor.  The  mode  by  pur- 
chase is  as  eifectnal  as  any  other,  and  courts  will 
go  as  far  to  protect  such  trademark  as  if  tlie  party 
devised  and  ;i(!o})fed  it.  A  party  purchasing  part 
of  a  ti'ademaik,  nnd  adopting  the  balance,  will  be 
protected  in  his  title  to  the  former,  as  well  as  the 
latter.  1871,  I/tdlam/polis  Sn^jerfor  Ct.,  /S'.  T., 
Solil  G.  Geisendorf,  1  Wilson,  GO  {^Irid.). 


I 


\   ;a 


fl 


ASSIONMEXT. 


40 


^  140.  Wliere  a  business  is  sold,  the  (Mitiie  good 
will  ;md  ri^lit  to  use  the  trademarks  pass  to  the 
purcliM^er  williout  any  express  mention  of  iIkmu 
beinu'  nuiile  in  the  (IcimI  <j1' assio-nmont,  and  iht'conit 
will  restrain  any  attempt  on  the  part  of  the  \'endoi' 
to  i-etain  either  for  his  own  benelit  or  use.  b'^TI.  W 
(1.  Mnli,ri<  ry.,  Shipwright  v.  Clements.  ID  IT.  A'. 
51)0. 

^147.  Wliere  tln^  plaintifTs  are  the  ])nr('h:isei's 
of  a  minei'al  si)ringand  all  the  interest  of  (he  oiiginal 
propi'ietoi's,  who  invented  and  used  a  trademark 
for  the  waters  flowing  from  sueh  s]M'ing,  tliey  ai'e 
entitled  to  relief  by  injunction  against  selleis  of 
mineral  water  att<Mn])ting  to  appropi'iatesuch  trade- 
mark, as  d('seri])tive  of  the  waters  sold  by  them. 
1871,  K.  Y.  Of.  of  A /)/).,  Congress  &  Empire  Spring 
Ccmipany  r.  High  lioek  Congress  Sjiring  Com])any, 
45  iV".  Y.  291  ;  8.  C,  10  Ahh.  Pr.  (/V.  k)  MS  ;  re- 
versing S.  C,  57  Barh.  52G. 

§  148.  A  property  in  a  trademark  may  be  obtained 
by  ti 


rransier  ii'om  Jiim  wno  lias  made  tne  primary 
acquisition;  though  it  is  essential  that  the  trans- 
feree shoidd  be  possessed  of  the  right  either  to 
nianufa(^ture  or  sell  the  merchandise  to  which  the 
trademark  has  been  attached.     Folgeu  J.,  Ihf'd. 

^  141).  Property  in  trademarlv  may  pass,  by 
operation  of  law,  to  any  one  who  at  the  same  time 
takes  the  I'iglit  either  to  manufacture  or  sell  tlie 
merchandise  to  which  the  trademark  has  been  at- 
tached. FoLGKR,  J.,  1871,  Congress  &  Empin^ 
Spring  Company  v.  High  llocli  Congress  Spi'ing 
Company.  JV.  Y.  Ct.  of  Apj).,  45  N.  Y.  291  ; 
S.  C,  10  Ahh.  Pr.  {N.  S.)  348  ;  reversing  S.  C.  57 
Barh.  520. 

§  150.     There  is  a  wide  distinction  between  acov- 

4 


■^"Ifi 

r  1 

^, 


IMAGE  EVALUATION 
TEST  TARGET  (MT-3) 


k 


A 


{/ 


^  .^. 


'^^ 


I/.. 


^ 


^ 


1.0 


I.I 


IM 


|50    ^^"      H^^ 

■^  1^  12.2 
Sf  144  "" 
10    12.0 


IL25  III  1.4 


It 
a 


i^ 


^ 


7^ 


^v^^ 


'^' 


Hiotographic 

Sciences 

Corporation 


23  WIST  MAIN  STRUT 

WnSTIR.N.Y.  I4SM 

(7l6)t73-4S03 


iV 


^ 


a>^ 


V 


<^ 


4 


4s 


6^ 


^V- 

^ 


,<i 


z 


«■ 


^ 


fiO 


ASSIGXMEXT. 


ennnt  not  to  pnga,£?e  in  ti'ade  and  a  covenant  to  lo- 
strain  tlie  nso  of  a  trademark.  '"'Iio  i'oriner  may  1)(> 
void,  as  heini?  a<?ainst  the  ])olirv  of  the  law,  wliile 
the  hitter,  not  beini^  ol)noxioiis  to  any  such  objec- 
tion, will  be  ejifoi-('(Ml.  A  nann*  lias  for  <'erlain 
])iiri)oses  a  comnjercial  value.  If  the  ])roi>rietoi' 
estimates  the  value  and  sells  it  to  anothei- ])ersou. 
to  the  extent  and  foi' the  purposes  foi-  which  h" 
sohl  it,  lie  has  no  right  to  use  it.  1871,  (U.  (>/'  Com. 
Phn.^,  Phil.  Pa.,  Gillis?\  Hall;  Ayer  r.  Hall.  :{ 
Breics.  500  :  S.  C,  1  Leg.  (Jaz.  R.  VU  \  S.  C,  S 
Phil.  2:n. 

^  ini.  Property  in  trademarks  may  b(»  fissi<j,iied. 
.  ^72,  (It.  of  Com.  Pleas,  Ph'tla.  Pa.,  A\  insor  r. 
01y<h\  0  Phil.  513.     See  ^  80. 

^  1.')2.  The  inventor  of  a  sauce  gave  it  th<»  name 
of  th(»  Licensed  Victualers'  Relisli,  and  designed  a 
trademai'k  for  labels  on  the  bottles  containing  it. 
and  employed  his  son  to  sell  it.  He  i)ermitted  his 
son  to  describe  himself  inhis  circulars  and  invoicr.' 
as  the  sole  proprietor  of  the  sauce,  'V\\o  son  be- 
came bankrupt,  and  his  trustees  sold  his  interest  in 
the  sauce  and  its  ti'ademark  t(>  the  ])lainrin's,  who 
now  sought  to  restrain  the  inventor  from  infringing 
the  trademark.  It  ai)peared  that  the  plaintiffs  did 
not  know  the  defendant's  recipe,  but  made  a  sauce 
wdiich  their  witnesses  deposed  to  be  indistinguish- 
abh^from  the  defendant's.  Held,  that  a  trademark 
could  not  exist  in  gross,  and  that,  as  the  ]>laintiffs 
did  not  know  the  recijie  for  the  original  aiticle, 
they  could  not  have  a  right  to  aflix  the  trademark 
to  a  sliam  article  for  the  purpose  of  imi)osing  on 
the  public.  1874,  Je.^sel,  M.  Ji.,  Cotton  v).  (.lillard, 
44  L.  J.  {N.  *s:)  Ch.  90. 

§  153.    The  plaintiflF  had  established,  and  acquired 


AssrciXMKNT. 


31 


a  valuable  repiifafioii  Hn*  a  hotel  in  (Jhi('a,u:o.  imder 
the  name  of  •*  Wood's  Hotel."  He  canicd  on  hiisi- 
iit'ss  at  said  iiotel  for  a  nnmUei' ol'  y(>ai's.  and  tiien 
sold  liis  interest  thei'cin  to  on.?  Ciiiiunin!i;s,  a,u"!V(!d 
Hot  to  open  anotbfi'  liotpl  dnfiiiii;  the  i-emainder  of 
the  leased  teem,  and  also  assi^-nod  the  us(i  of  his 
aaiiu*  to  said  (/iiin mine's.  'IMie  pi-eniises  w<Me  hiii-ned 
(liiiiiiL!:  ('iimniin,L!:s'  niaiia'jicinciU.  ATter  said  bnrn- 
iiiii'.  ihc  (h-(Viidant  oi)enHd  a  hotel  in  ('hicauo,  nnder 
the  name  ol'  "Wood's  Il(tt(»l,""  and  annoiin('e(l  it  to 
he  tJKM'eopenini;' oC  "•  Wood's  Hotel."  In  the  mean- 
time. Wood,  the  i)laintill',  liad  pniehased  back  Irom 
(Jamming's,  the  rii,dit  to  the  nse  of  the  name 
'•Wood's  Hotel,''  and  had  opened  anothei'  liotel 
nnch'r  that  name  in  a  dilt'erent  place.  Plaintill"  tiled 
a  hill  to  enjoin  defendant  from  nsinu-  the  name 
"Wood's  Hotel."  The  defendant  claimed  that 
l)laintifl:'  arqnired  no  title  to  said  trademark  from 
Cnminini!;s,  as  it  was  not  assi^-nable.  UihJ,  that 
the  del'eiKhmt  shonld  be  enjoined — that  said  trade- 
m:irk  was  capable  of  assii^nment — or  at  least  that  it 
coidd  be  assigned  for  the  pnrpose  of  beinii'  used  on 
the  premises  where  it  had  previously  been  nsed. 
That  whatever  value  thei-e  was  in  said  trademark 
was  the  i)laintiirs  property.  187."),  Vircnit  CV., 
Vook  Vo.^  11/.,  Woodsy.  Sands,  nnreported. 

Ji  ]r>4.  Qncrt/, — If  a  trademark,  the  reputation 
of  which  depends  on  \\w  excellence  of  the  ma nn- 
I'actnre,  ov  the  skill  and  Inmesty  of  the  manufac- 
turers, can  lie  legally  assigned.  187(5,  ^Supreme  Ct. 
of  7?.  /.,  Carmichael  v.  Latimer,  nnreported. 

See  Partneusiiip.     Also  §§  87,  88,  92,  164. 


^. 


62 


Association — Books. 


ASSOCIATION. 

See  Origin  and  Owneusiiip,  and  §§  201,  694,  750, 

710,  1010. 


ATTACHMENT. 


See  Contempt. 


AUCTIONEER. 


See  Vendor. 


BANKRUPTCY. 

See  §§  121,  135,  142,  162. 


BARRELS. 

Peculiar  shape  of,  not  a  valid  trademark. 
See  §§  983,  985,  986. 


BOOKS. 
See  Publications. 


BOTI'LES— Bu  ILDINGS. 


ns 


■  m 


mWm 


Si- 


BOTTLES. 
Peculiar  shape  of,  not  u  valid  trademark. 


BOXING. 


^  inO.  A  selection  of  boxes,  signs,  colors,  l:d)el», 
the  ])lirns(M)l()gy  of  cautions,  jind  styN;  of  Jeltering-, 
tiiay  all  be  designed  to  aid  in  liie  per[)<'l ration  of 
a  fiaud,  and  may  be  th(*  most  concbisivc^  (nid<Mi(te 
of  Ihc  intent  lo  mislead  the  public  and  to  commita 
fraud  upon  the  ])IaintiiT  in  relation  to  some  (U!vi(H! 
of  his  connected  witji  a  trademark  :  ncI,  meielv 
because  they  arc;  such  evidence,  or  hecau.-e  IIk.'v 
have  been  used  with  such  intent,  it  does  not  follow 
that  their  use  vwn  hv  legally  enjoined  and  resliained. 
The  manner  of  boxinu',  tliei)hraseolo^y  and  otluu-  in- 
cidents ai'e  open  to  the  pid)lic.  18G7,  i\''.  Y.  i^uprtiiit 
ri.,  S.  T.,  Gillott  VI.  Esterbrook,  47  n<nh.  4.m;  1808, 
JS/fprci/ic  Ct.  of  Cal.^  Falkinburgh  «.  Lucy,  ou  Cal. 
C)2.     See  also  §  19. 


BUILDINGS  (Names  of). 

^  100.  The  principle  upon  which  trademarks  are 
protected  is  not  confined  to  articles  of  personal 
property  which  a  man  may  manufactuie,  but  may 
be  applied  to  a  hotel.  Hence  where  ])laintiif 
opened  a  hotel  in  New  York  city,  under  the  nan; 


flM  ri 


!WM|: 


..  .1.. 


54 


BriLDINGS. 


of  Trvin,£r  House,  wliicli  soon  Ix'ciuik'  .ucncriilly  nnd 
eqiiiiily  known  as  tlic  Irvini;:  lIous(^an(l  Irvin-j;  lloicl. 
and  was  kept  hy  liini  wliilc  thus  (l('si<i;nate(l,  and 
till'  tU'lViidant  subsi'iinontly  scltin.u;  ii})  a  huicl 
called  Irvini;,'  Hotel,  in  the  same  «'ity,  tlio  latter  was 
restiaincd  I'l'oni  the  use  of  that  name  by  injnn<'tio!i. 
18.')),  iV.  )'.  Superior  CL,  Howard  /'.  Henii(ines.  :> 
t^aiidf.  Kiiprrior  VI.  723. 

j^  1(51.  The  name  establislied  for  a  hotel  is  a 
trademark,  in  wliich  tla^  proprietor  has  a  valuable 
interest,  Avliieh  a  couit  of  equity  will  protect  by  in- 
junction. J8(»;?,  Sitprt'iiie  rV.  of  Cd/.,  Woodward 
0.  Lazar,  :2l  ('((/.  44S. 

^  1(5:2.  A  p(>rson  may  have  a  ri,2;lit,  interest  or 
j)roi)erly  in  a  paitieular  name,  which  he  has  uiven 
to  a  i)articular  house,  and  I'or  which  house,  under 
the  name  <;i veil  to  it,  a  reputation  and  good  will 
may  liave  been  acquired ;  but  a  ti'uant,  by  g'iviut;'  a 
})articulai-  name  to  a  building  which  lie  a]q)lies  to 
some  ])articular  use,  as  a  sign  of  the  business  done 
at  that  place,  does  not  thereby  make  the  name  a 
lixtui'e  to  the  building  and  'j'ansfer  it  iirevocablv 
to  the  landloid.  Accordir  .y,  whei'e  the  [)laintilt*, 
the  lessee  of  a  lot  of  land,  erected  upcm  it  a  build- 
ing, which  he  occu[)ied  as  a  hotel,  and  to  which  he 
gave  tlu;  name  of  ''What  Cheer  House,"  and  be- 
fore the  expiration  of  the  lease  purchased  an  ad 
joining  lot,  ui)on  wliich  he  erected  a  largei'  build 
ing,  and  for  a  time  occupied  both  buildings  as  the 
"  What  (Jlieer  House,"  the  jjilncipal  sign  being  re- 
moved from  the  first  and  i)laced  ui)on  the  second 
building,  and  in  November,  ]8(i<).  surrendered  the 
leM.ied  premises,  with  the  buildings,  to  the  owner 
of  the  land,  but  ccmtinued  to  cany  on  the  "  \Vhat 
Cheer  House  "  in  the  adjoining  building  aforesaid, 


15lildi.\gs. 


r)o 


nii;l  ill  J;iiiii;iry,  1<S(5I,  rln' <lt^ftMi(l:uit  purchased  the 
liisl-mciiliiUKMl  lot  and  Imildiiiu;.  and  ()p;'iu'!l  then' 
a  hotel  under  the  name  of  tip-  '•  ()riu,inal  What 
Cheei-  House.'"  the  word  "  <  iiiinal'"  l»eiini-  in 
smaller  let  lets  than  the  residue  <»l"  the  title  and  dis- 
posed so  as  t()  deceive  the  pid)lic:  Jleld,  tiiat  tlie 
plaintilf  was  entitled  to  i>fotei'tion  in  tlie  exclusivti 
usii  oC  the  name  as  j)i-opiietoi'  of  the  new  house. 
1 1,  id. 

i  nj:>.  Where  I  lie  plaintilV  had  consented  to  the 
use  ol'  his  name  as  a  trademark  by  the  defendant 
for  a  h(»tel,  and  the  i)late  and  other  articles  in  the 
hotel,  and  had  afterwards  withdrawn  such  con- 
sent, and  it  ap])eare.d  that  the  plate  and  other  arti- 
cles, marked  with  the  name,  would  heconie  value- 
less if  their  use  was  enjoined,  and  that  no  serious 
injuiy  f':)m  such  use  would  accrue  to  the  plaintilf, 
it  was  /i.  hi  that  oidy  the  use  of  the  nante,  McCar- 
ih'l  House,  upon  the  huildiiii,^  itself,  as  a  business 
siu;!!.  wouid  he  prohibited.  18(54,  X.  Y.  Sifprtnu' 
(if.,  (1.  7;,  McCardel  r.  Peck,  28  ll(>u\  Pr.  120. 

^  1(54.  An  agreement  by  the  ])roprietor  of  a 
hotel  with,  and  license  to,  another,  jtei'mittinn'  the 
latter  to  i)lace  the  name  of  a  hotel  upon  his  coaches, 
such  arraiiLi'iMuent  to  continue  so  lonu;  oidy  as  the 
))arties  were  mutually  "satislied."  held  to  be  a  valid 
contract,  and  would  contiiuie  until  teiniinated  by  a 
notice  from  either  party.  Continuing-  the  use  of 
such  name,  ])y  the  licensee,  after  the  license  has 
ceased,  or  is  terminated,  may  be  restrained.  The 
l)roprietor  of  a  ^■olel,  and  his  licensee,  may  each 
claim  the  protection  of  the  court  for  any  vi(>lation 
of  his  individual  rii^hts,  and  the  pendency  of  a  suit 
by  such  licensee,  for  the  injury  he  has  sustaine<l, 
is  no  bar  to  an  action  by  the  hotel  proprietor.     18U0. 


I  Wt 


trl 


I 


..>'  i 


.■■■-  i\. 


mw 


'% 


\       1*:- 


m  n 


ifi 


vr 


mm 


56 


BUII.IUNGS. 


N.    Y.  Suprr/or  CI.,  R  71,  Deiz  r.  Lanil),  (5  AWV. 

r>:J7. 

^'  Km.  Ill  IS(;s  111.'  i»kiintilf  hiiilf  ii  tliciircr  wliirh 
lie  cMllcd  "  Booth's  'riK'iit'.M'."  I'^'om  I'\'l)ni:iry, 
IS(5!),  to  Jjiiiiiiiry  :>(>,  IS7;{,  he  uiantincd  said  theater 
aiul  obtained  I'or  if  a  <2,reat  r(»[)Utatlou  iiiuhT  said 
name.  PlaintilV  re-leased  said  theater  under  tiie 
desiunatioii  of  "  Booth's  Theater"  to  .1.  !>.,  on  Jan- 
uary :{<>,  187;},  and  on  Apiil  7.  1874,  .1.  15.  assigned 
said  lease  to  der«'ndants.  PlaintilV  had  iiiort,u,a,i;'ed 
the  ])reniises  under  said  designation,  and  in  the 
foreclosure  suit  of  the  mort,<iau;e  the  i-eceiver  in  the 
suit    liad    accepted  delendants   as    tenants   of    the 


I 


)reniises. 


Miice 


A])ril 


1874,    defendants   had 


carried  on  the  theatrical  business  at  said  theater, 
desiu-natini!;  ihe  same  as  ''I^Hjth's  Theater,"  but 
re])resentin,<2:  t  hemseives  as  the  lessees  and  managers. 
Plaintilf,  claiming"  that  by  tlu^  us<»  of  the  name 
"  Booth's  Theater"  the  i)nblic  would  be  misled  into 
believin.ii;  that  he  was  still  its  manager,  and  would 
be  deceived  into  going  there,  sui»j)()sing  he  still  act- 
ed there,  and  that  he  would  be  injured  theieby, 
brought  an  action  to  restrain  the  defendants  from 
the  use  of  the  name  *'I'»ooth's  TlnMiter."  and  applied 
for  an  injunction  pi'iidciih'  J  lie.  Held,  that  the 
motion  should  be  denied.  The  plaintiff  by  his  acts 
has  ailixed  his  name  to  the  theater,  so  that  his 
grantees  and  their  successors  have  th(^  right  to  call 
the  building  '"I^ooth's  Theater,"  the  name  which 
he  had  given  it.  The  use  of  the  name  indicates 
nothing  more  than  that  the  theater  was  built  by  the 
plaintilV.  1870,  N.  Y.  Com.  Pleas,  >S'.  T.,  Boo\h  c. 
Jarrett,  52  Ihno.  Pr.  100. 


See  also  ^S  124,  12.1  147,  149,  ir>3,  511. 


Causk  of  ACTIOX. 


67 


;  \ 


'5-'  t'i 


BUSINESS  SIGNS. 

liifrinfj;omeiit   iind   iinitjitiou  oC  l)iisiiiess   .signs. 
Seo  Signs;    Buildings;  Pai:tni;usiiii'. 


CAUSE  OF  ACTION. 


§170,  An  iiclion  upon  the  case  was  l)iou,i>;lit  in 
the  Coninioii  l*leas  by  a  clothici',  thai,  wlicicas 
h(?  liad  u'aiiKMl  uTcat  reputation  for  liis  iiiakiiiu'  of 
his  ('loath,  by  reason  whereof  lieliad  great  utterance 
tohisgi-eat  benefit  and  prolit,  and  that  he  used  to 
h't  his  mark  to  his  ch)ath  wherebv  it  sliouhl  be 
Jvuown  to  b(^  liis  <'h)ath  ;  and  anofliei'  ch»thi«^r  per- 
ceiving it  used  the  same  mark  to  his  ill-madf  ch)al  h 
on  ])ur|)ose  to  (h'ceive  him,  and  it  was  resolve<l  that 
tlie  action  did  well  lie.  b")0(),  case  citfMl  in  South- 
ern /".  How,  /*(>/)// ff.'//  R.  14;},  And  Doderidge  citcnl 
a  case  to  b(^  adjudged  :>;)  Eiiz..  in  the  common 
bencli :  A  clothiei-  of  (.Tloucestershire  sob  I  very 
good  cloth,  so  that  in  L(m(b)n  if  tiiey  saw  any  cloth 
of  his  mark  tliev  would  buv  it  without  seaiching 
tlier(M)f  ;  and  another,  win*  made  ill-cloth,  i)ut  his 
mark  npon  it  without  liis  privity;  and  an  acti(m 
n])on  the  case  was  brought  by  him  who  bought  the 
cloth,  for  tliis  deceit,  and  adjudged  maintainable.  2 
Cro.  Jar.  471.  But  see  S.  c!,  2  liidh'.  11.  28,  where 
Lord  IJoLLi-:  expressly  states  that  Dodcridf/e  did 
not  say  whether  the  action  was  brought  by  the 
clothier  or  by  the  vendee,  but  adds:  Sc/jtl/fc  c///r? 
r//.s7  /iitr  1e  rmdee.  See  S.  C,  commented  u])on  in 
4  M.  ct-  a.  :]S0. 

^  171.     The  plaintiff,  for  a  long  time,  had  been 


H\n 


V  '1 


kV  ■'.  h 


^J^ -^ 


58 


Caus^k  of  Actiox. 


!i  nianufiH'liircr  ol'  sI<m'1  jxmis,  which  wcro  sold  in 
boxes.  The  (Mies  containing'  pens  of  the  lincst 
«liialily  wci'c  Inhch^d  No.  IJOIJ.  and  the  boxes  coti- 
tainin,!H"  jiens  of  an  inferior  (inality  were  hibeled  No. 
7.")''].  'I'he  coinj)laint  char.i;e(l  that  the  def<'n(hinr 
was  in  the  juactice  of  ii'inovin.^  the  hibels  Troni  the 
boxes  hist  mentioned  and  pnttini;' on  in  phice  there- 
of labels  nnnibcM'ed  oOi),  closely  inii tat in,Ji;  (he  Pen- 
nine labels  bearini;'  that  nnniber.  IhJd.  tliat  this 
l)iacliceof  the  dereiuhiiit  defranded  both  tin;  pnb- 
lic  and  the  plaintilf,  and  that,  if  the  injnred  party 
was  obliued  to  seek  fedress  bv  ac^tion  to  recover 
dania,i;"es,  there  wonld  be  no  end  to  litigiition,  and 
certain  and  adeqnate  relief  wonld  be  unattainable. 
Defendant  was  enjoined.  18.")4,  i\\  Y.  ^iiipcn'or 
CI.,  a.  71,  GiUott  r.  Kettle,  8  Dur)\  024. 

J?  172.  Sclliiiff  htbcis  ini(it(((ch<'(l  to  t/ood.s.—X 
nrannfactnrer  who  lias  ado[)ted  u  trademark  to  des- 
iiiiiate  some  particular  article  as  made  by  liim,  has 
a]i,iL!,ht  to  the  assistance  of  the  court  toi»revent  tiny 
one  from  so  using  the  same,  or  any  similar  mark, 
as  to  induce  purchasers  to  believe,  contrary  to  the 
fact,  that  they  are  biiyin^j;  that  particular  article  to 
which  the  mark  was  oriuintiUy  ai)plied.  In  a  case, 
liowever,  where  the  mark  c(msisted  of  a  label  in  a 
certain  form,  and  it  was  shown  that  in  very  many 
instances  labels,  tin?  same  as  or  similar  to  it,  might 
be  sold  for  a  legitimate  ])urpose,  the  c(mrt,  in  the 
absence  of  any  i)roof  of  actual  I'rand,  refused  to 
restrain  the  jninting  and  sale  of  such  labels  nntil 
the  mannhicturer,  who  alleged  that  they  were  nsed 
for  a  fraudulent  pur])ose,  lias  established  liis  case 
by  an  action  at  law.  IHoO,  before  the  Lord  Ch.,  on 
api»eal.  Farina  r.  Silverlock,  0  De  G.  M.  ct  6'., 
214:  S.  C,  2  Jurist  JS'.   -8'.,  1008:  S.   C,  26  Law 


Catsk  of  Action'. 


no 


m 


./Off/'.  (X.  R)  Ch.  11  ;  ivvLMsinu-  S.  ('.,  I  /w///  <(•  ./. 
now  :  S.  ('..  ^2\  L(tto  Jottr.  (X  N. )  I'/t.  o:{-> ;  jiiid  s.-c 
S.  ('..  Ksns,  4  Kcf/A.'.f.  (;."■)(». 

i^  it:!.  WIk'I'c  ji  i»iiiit('i'  hiul  bciMi  in  llic  linbit  of 
j)iiiiliii,u'  ;iii(ls('llin,!4"  indisciiininiircly  liilx'ls  ('oiitiiiii- 
iii'j,"  a  f'opy  <>i'  <'((l()ial)le  iiuifulion  ol'  llic  tradi'iiiark 
of  the  plaiiiliir,  tlu*  n'!el»rat('(l  inaiiiira«'lMi('r  of  can 
do  cologne,  and  the  plaint ilf  had  lilcd  his  hill  Tor 
an  injnnction  to  resti'ain  snch  print in,u-  and  scllinu'. 
wliicii  was  u'lanted  by  \Vo(»i»,  \'.  (\,  the  Luid 
Chancellor  dissolved  tlie  injnnction,  with  lihcrty  to 
the  j)lainlin'  to  hi-ini;"  an  action,  on  the  .uToiind  that 
it  ap[>eared  by  the  eviihMice  that  Ihei-e  was  a.  leii'iti- 
inate  object  Tor  which  these  labels  niiu'lit  \h\  api>lied 
by  retail  dealers,  vi/, :  to  replace  soiled  labcJsalUxed 
to  bottles  <"ontainin,ii:  tlie  ^'ennine  eau  de  cologne  <d' 
the  plaint  iir.     I  hid. 

jj  174.  The  deremhint  sold  soihi  water  of  his  own 
nianni'actnro  in  ])ottles  which  he  had  bouulil  at 
second  hand  and  which  were  stainiu'd  with  the  i)lain- 
tiir's  name  and  achh'ess.  The  del'endanl  slated,  in 
his  allida\it,  that  it  was  the  (;nston»  of  the  trach',  on 
sellin.ij!,'  bottles  of  so(hi  water,  to  take  in  retui-n  foi* 
the  botth's  soldanetpuil  nnniber  of  similar  bottles, 
withont  re,i2:ar(l  to  the  name  monlded  tluM-ein,  and 
that  lie  believed  tlie  botth'S  mentioned  in  the  plain- 
tilt's  afhdavit  as  haviniz;  been  sold  l)y  him  were  l)ot- 
tles  oiiuinally  mannfactured  for  the  nse  of  th«i 
])laintill's  and  sold  by  them  to  the  pnblic.  The  pre- 
liminary injunction  resti'aining  the  defendant  was 
dissolved,  the  court  being  of  ojunion  that  defen- 
dant was  not  shown  to  have  nsed  the  bottles,  either 
with  an  inteiiticm  or  so  as  in  fact  to  mislead  the 
pnblic.  18:)7,  Vice  (Hi.  WoofT s  CL,  ^V^elch  «.  Knott, 
4  Kdf/  &  Johns.  747. 


"»Pf|rr 


60  Causk  of  Actiox. 


8  17/».  l>ut  llu^  user  cd'  such  bottles  so  as  in  fact 
to  mislead  I  lie  piiMie,  altliou^Mi  iiniiiteutioually, 
would  l)(!  rest  rained,     ()hil<  r.     J  hid. 

^  17(5.  Whether  or  not  the  onus  was  thrown 
ii[)on  derendant  of  hd'orniing  (lie  |)Ml)lic  that  it  was 
not  plaintiirs  soda  water  he  was  s^Ilin^.  Quaere. 
I  hid. 

'^  177.  The  hill  was  tiled  by  an  American  tiadin^ 
coiniKiny.  incori)orated  by  the  law  of  the  State  of 
Connecticut,  for  an  injnnctioi;  io  restrain  the  de- 
fendant, a  manufacturer  at  13irmin,<;liani,  from  con- 
tinuing- \\u^,  fraudulent  use,  as  alle^-(.'d,  of  the  trade- 
marks of  lh(»  [jlainlill's,  and  for  an  account  t>f  the 
prolits  m:ide  by  him  fr(»m  such  use.  The  defen- 
dtinl,  by  his  answer,  admitted  the  user  of  the  tiade- 
marks  com[)lained  of,  but  by  way  of  rebuttal  t)f 
thech:irii,'e  of  fraud,  stated  that  in  so  usiiiu;  the  said 
trad(Mnarks  he  had  only  followed  a  custom  preva- 
lent at  13irmln<i;hatn  for  manufacturers  of  goods  of 
the  kind  sold  by  the  plaint ilf,  to  alllx  on  the  goods 
ordered  by  merchants  a  i)articular  tiadcmark,  rely- 
ing on  the  respectability  of  the  merchant,  when 
known  to  them,  for  the  fact  that  those  merchants 
had  nuthority  to  act  as  agents  of,  or  by  way  of  li- 
cense from,  the  i)erson  entitled  to  the  exclusive  use 
of  the  trademarks;  and  further,  that  he  had  been 
informed  that  the  plaintill's  themselv(^s  had  ordered 
goods  to  be  manufactured  at  Birmingham,  with 
their  own  trademark  upon  them,  for  the  purjjose 
of  sale  in  foreign  <'ountries.  The  court,  upon  nio- 
titin  for  decree,  ordered  that  an  interim  injunction, 
which  the  defendant  hail  previously  submitted  to, 
should  be  continued  for  a  year,  with  liberty  to  the 
idaintilfs  to  bring  an  actiim  witliin  that  time  to  try 
their  right  at  law  ;  and  in  case  of  their  not  proceed- 


Cattsk  of  A(^Trox. 


Gl 


■^ 

f 

I 

1 

1 

)n,2f  at  law  nnd  fo  tri:il  witliin  fli;if  (inio.  llicn  tliat 
their  bill  sliouKl  tli('i>Mi]M»ii  stiiiid  disniisscd  \villi 
costs.  1S,V.),  Vice  Cli.  Kindimisi.ky,  Collins  Co.  /'. 
IJocves.  *J8  Loir  Jour.  (' h .  .'■)(5. 

^  178.  Witlioiir  ii  pMtciif  1'roni  the  .Q:ov('rnni<'Tit 
no  one  has  an  exclusive  riuhr  to  inaiml'acliir»>  and 
sell  pills  as  ji  useTul  invention.  Theiel'oiv  an  in- 
iiinction  will  not  !)e  oianted  to  i'«'strain  an  innocent 
defendant  from  iiiannl'actni'iim'.  advertising;  or  sell- 
ing by  nny  name,  desiunation  or  tradeinai  k  lesem- 
blinn"  ]»laintitf's,  pills  pn^dsely  like  those  niannfac- 
tni'ed  ;ind  sold  by  the  piaintiff,  nr  pills  «'onn)os(!d 
of  the  same  elementaiy  consiii  utMits.  ISDO,  .Y.  )". 
Suprnne  CL,  S.  T.,  Comstock  (\  White,  IS  JIo/o. 
Pr.  421. 

^  17i).  A  havin.i^  infrini^ed  B's  trado;nark  on  a 
blistei'ing  ointment  mannfactnred  by  A,  it  was 
agreed  between  them  that  all  claims  in  respect  of 
such  invasi<m,  not  only  with  respect  to  A,  but  to 
include  all  jiarties  who  might  have  purchased  the 
ointment  from  liim,  should  be  set  tied  and  dischai'ged 
by  the  payment  of  a  sum  of  money  ;  and  W  under- 
took to  execute  a  re'ease  of  all  claims  and  demunds 
in  respect  of  the  above  infringement.  Before  the 
agreement  A  liad  sold  large  quantities  of  the  oint- 
ment to  different  persons,  who,  after  the  agreement, 
sold  it  with  B's  trademark;  and  suits  were  com- 
menced against  them  by  B,  for  injunctions.  A 
thereupon  sued  B  for  a  specilic  performance  of  the 
agreement  to  execute  a  release,  and  to  restrain  B 
from  proceeding  in  the  several  suits.  Ifdtl.,  that 
the  agreement  was  confined  to  sales  by  A,  and  all 
other  persons  to  whom  he  had  sold  the  ointment, 
prior  to  the  agreement ;  and  did  not  authorize  a 
sale  by  the  latter  after  the  agreement.     Petition 


I: 
I'- 


63 


Cause  of  Action. 


denied.     18G2,   IloUs  Cotirl,  Oldliiim  r.  Jones,   V.\ 

Irish  ('It.  ;]r»:i 

jj  180.  Spurious  clianipai^ne,  luivinc^  a  counter- 
IVir  i>i-:in(l,  was  dcjujsited  with  wlinilin,£2,eis.  who, 
liaviiiLi"  notice  of  the  fraud  an<l  tliat  an  injunction 
was  al)ouf  to  be  apjjiif'd  f<^)r,  refused  to  delivei'  it 
over  to  tlie  h()id<M-  of  tlie  do<'k  warrants.  The  court, 
upon  bill  iiled,  icstraiucd  an  action  for  dauia^cs  for 
tlie  non-del iveiy.  couiinenced  by  tlie  holder  of  tlie 
warrants  a,u:aiiist  the  wharfingers.  1804,  JioIIs  CI.. 
Hunt  i\  Maiiiere,  lU  Bcanuu  lo? ;  S.  C,  11  L.  T. 
R.  {K.  S.)  4m. 

^  181.  Wliere  a  defendant  sold  articles  similar 
to,  thoui^h  not  manufactured  by,  the  plaintilt'  in 
boxes  beai'inii;  the  i)]aintift"'s  labels  ;  the  court,  on 
motion  for  an  injunction,  restrained  the  defendant, 
from  so  selling  or  exposing  for  sale  such  ai'licles. 
KSOf),  V.  Ch.  SfmirCs  CY.,  Buiuett  ?;.  Leuchars,  KJ 
L.  T.  n.  (iT.  »SV)40.-). 

^  182.  The  danger  of  judicial  proceedings  is  not 
an  injury  justifying  an  injunction.  A  person 
cliaiged  with  an  infiingenient  of  a  trademark  and 
against  whom  an  action  is  threatened  and  about  to 
be  commenced,  cannot  maintain  [Ui  action  to  restrain 
the  commencement  of  such  threatened  a(!tion,  and 
the  fact  that  an  injunction  against  him  would  be  a 
serious  injury  to  his  business  furnishes  no  justitica- 
tion  therefor.  It  is  no  gi-ound  for  equitable  inter- 
ference that  the  decision  may  result  in  determining 
the  law  in  a  way  which  will  or  may  have  the  efl'ect 
of  preventing  suits  between  other  parties.  1874, 
N.  Y.  rt.  of  App.,  AVolfe  v.  Burke,  m  N.  Y.  115; 
reversing   S.  C,  7  Laiifs.  151. 

^  18;}.  The  plaintiff  was  a  gun  maker,  who  man- 
ufactured rilles,  purchasing  some  of  the  different 


Causi-;  or  A<  tiox. 


(>'A 


pjirts  from  various  makeis,  and  putting:  tlicni to2;ptli- 
(Tsoas  rororin  a  conqjlete  liik'.  wliicli,  after  liavino; 
Ix'Pii  viewed  'ind  approved  l>y  liiiu,  was  sfaiiijied 
with  liis  i:ani(.»  and  trad»»mark  on  the  lockplatc  as  a 
i:;uai"intee  tlitit  it  liarl  been  exaiiiiiUMl  and  appictvrd 
liy  liitn.  lie  also  iitted  to  the  rill<\s  hnei's  manu- 
factured by  himself,  foi'  wliieii  lie  liad  taken  out  a 
patent,  and  these  levers  were  also  niaiked  with  his 
name.  The  idaintiff's  rilles  so  marked  with  his 
name  had  a  ^-reat  reputation.  The  ])laintilf  snj)- 
])lied  I'illes  so  marked  and  ,t;"uai'anteed  by  him  to 
the  uoveinuKMit.  and  wlnni  they  l)eeaine  unsuitable 
for  u'ovennnent  'turposes  they  were  taken  to  ]>i('ees 
and  some  of  the  parts  mutilated  and  sold  as  old 
stoi'es.  The  dc^fendant  bou^'ht  some  of  these  old 
stores  as  old  iron  in  market  overt,  ineludin,!;:  levers 
and  loekplates  with  the  plaintiffs  name  and  trade- 
mai'k  up(m  them,  and  litted  them  to  old  rille  bar- 
rels, which  had  been  cut  down  to  the  siz(»  oC  car- 
bine barrels,  and  were  not  suit(>d  to  the  action 
which  f(n'med  part  of  the  rilles,  as  passed  and 
uuaranteed  by  the  ])laintiff.  At  this  time  the  plain- 
tiff's ])atent  foi"  the  lever  had  expirtnl.  The  coui't 
granted  an  injuncti(m  to  restrain  the  defendant 
fi(mi  making'  up  said  loekplates  and  level's  into 
tiiearnis  and  allowing-  plaint ilFs  ti-ademark  to  I'e- 
niain  on  the  loekplates  and  levers  so  as  to  induce 
the  pul)lic  to  believe  that  the  iirearnis  were  manu- 
factured by  the  plaintiff.  1874,  Vice  Ch.  Bncon\s 
r/.,  Richards  v.  Williamson,  30  L.  T.  {N.  S.) 
740  ;  22  W.  11.  70.'). 

^  184.  The  plaintiff,  a  ci<?nr  mercliant  in  London, 
ret^istercd  a  label  at  Stationers'  Hall,  which  he  re- 
(piested  G,  the  manufacturer  at  Havana  who  sup- 
plied him  with  cigars  of  a  particular  description, 


Mi;: 

\m 

^  yt . 

n 

\i 

^          .'  1 

'    .         \ 

'/.% 

V 


ijp^p 


04 


CiRcuLAiis— Coaches, 


to  :if]ix  to  oach  box  consi.niiod  to  liim.  (J  accoid- 
i!iii,ly  allixod  tlie  label,  with  his  (Avn  name  a^-  iiian- 
ul'actm'er,  to  all  l)oxes  so  eonHi2:iie(l.  The  i)laiuliir 
suhse(|iiently  discovered  that  (f  was  siipi)!yin,u- 
(•i,i;"ai's  oi' th(!  same  description,  and  with  the  same 
label,  to  the  dei'endants,  who  wej-e  G"s  ag(Mits,  a!'.'J 
br()u,i>-ht  an  action  to  restrain  the  alleged  inl'iinge- 
ment  of  his  trademark.  On  a  motion  for  an  in- 
junction against  the  defendants,  luid,  that,  there 
being  no  evidence  of  any  contiact  that  (J  should 
supply  the  plaintiff  exclusively  with  that  descrip- 
tion of  cigars,  tlie  court  could  not  on  an  interh^cu- 
tory  a])plication  restrain  the  defendants  from  using 
the  label.  1870,  Jcs^d^  M.  R.,  Ilirsch  d.  Jonas,  4n 
//.  ./.  {^N.  S.)  Ck.  864;  S.  C,  B'nff.  L.  li.  8  Ck. 
Dio.  584. 

See  also  §§  821,  826. 


CIRCULARS. 

See  Publications  (Advertisements). 


CITY— NAME  OF. 

When  a  valid  trademark. 
See  Name  (Geoghapiiical  Name). 


COACHES. 

Names  of,  when  protected. 

See  Vehicles. 


Contempt.  65 

COLORABLE  INFRINGEMENT. 

What  constitutes  a  colorable  infringement.     See 
Imitation. 


COMMON  USE. 
See  Words  ;  Acquiescence. 


CONTEMPT. 

§  190.  Where  an  injunction  is  granted  to  restrain 
the  use  of  a  trademark,  and  the  defendant  disobeys, 
and  the  plaintiff  moves  for  n  commital,  acquiescence, 
if  set  up  as  a  defense  against  the  motion  to  commit, 
must  be  shown  to  be  such  as  to  amount  almost  to  a 
license  to  use  the  mark,  and  entitling  the  defend- 
ant himself  to  a  right  in  tlie  use  of  the  mark.  1858, 
Ch.  Ct.  of  Appeal^  Rodgers  v.  Nowill,  22  Lam 
Journal  li.  {N.  S.)  Ch.  404;  reversing  S.  C,  17 
Jurlsf,  109,  and  S.  C,  17  Bnr/.  L.  «&  Eq.  8:3. 

§  191.  When  there  had  been  a  breach  of  tlie  in- 
junction, the  Vice  Chancellor  (Wood)  refused  to 
commit  in  respect  of  such  breach  on  account  of 
the  plaintilFs  delay  in  coming  to  the  court,  but 
ordered  the  defendant  to  pay  the  costs  of  the 
motion.  July  12,  1801,  Cai  tier  i\  May  (unreport- 
ed), Reg.  Lib.  1801,  A.  1738 ;  cited  in  Ludlow  & 
Jimkiins  on  I'radciuarks.,  42 ;  and  see  Rodgers  'G. 
Nowill,  8  i).  3f.  c&  G.  014. 

§  192.  The  defendant  had,  by  a  series  of  inge- 
nious substitutions,  managed  to  evade  the  letter  of 


:  mil 


1  * 


I 
■k 


■IllUlf IP 


T 


66 


Contempt. 


the  injunction,  while  evidently  hivakini?  it  in  spiiit, 
and  the  court  accordingly  was  obli,<i;(Hl  to  dismiss 
the  motion  to  commit  him.  At  the  same  riiiu^  tin* 
terms  of  the  injunction  w^re  so  amended  l)y  tiie  ex- 
pi-ess  and  absolute  prohibition  of  the  use  oL'  certain 
words  in  the  phiintifT's  labels,  as  to  aiford  him  sub- 
stantially the  security  which  he  desired  and  to 
which  he  was  fairly  entitled.  July  12,  1S{;i,  be- 
fore Vice  Cli.  Wood,  Cartier  c.  May,  cited  in  LlQijd 
on  Tr(ulemarli.<i,  f)."),  77. 

§  10:3.  In  Cartier  v.  May  (V.  C.  Wood,  July  l->, 
1861),  where  a  perpetual  injunction  was  obtained  in 
the  year  1850,  for  the  breach  or  the  alleged  breach 
of  which  a  motion  for  committal  was  id'terwarch^ 
made,  but  was  refused,  and  his  Honor  observed, 
whe*  amotion  was  made  before  him  on  the  <hite 
above,  to  vary  the  terms  of  the  injunction,  ''that 
since  it  had  been  granted  there  had  been  on  the 
part  of  the  defendants  a  series  of  ingenious  devices 
to  secure  the  misrepresentation  Avithout  conung 
within  the  terms  of  the  injunction  ;"  so  that  in  the 
end  his  Honor  was  obliged  to  make  an  order  al^so- 
lutely  restraining  the  use  of  the  wojds  "Cross  Cot- 
ton,'' which  were  used  by  the  phiintiff  on  his  labels. 
Cited  m  Lloyd  on  Trademar/i.s,  42. 

§  194.  Where  an  injunction  order  is  delinite  and 
jieremptory  the  defendant  nuist  obey  it,  or  at  once 
procure  an  alteration  or  dissolution  of  it.  It  he 
fails  to  do  either,  nn  attachment  for  contempt  will 
issue  against  him.  1864,  JV.  Y.  Supreme  Ct.  (J. 
T.,  McCardel  ».  Peck,  28  How.  Pr.  120. 

§  195.  For  the  purpose  of  sustaining  a  motion 
to  punish  for  a  contempt  in  violating  an  injunction 
as  to  trademarks,  it  should  appear  clearly  that  the 
ordinary  mass  of  customers,  paying  that  attention 


Col'VUlCillT, 


(57 


T 

If 

■■I 

/ 

, '  ?•■• 

1 

which  siioh  persons  usiuilly  do  in  puicliasin^,  \v(»uUl 
be  easily  deceived  by  the  hd)el  used  by  I  he  del'end- 
ant.  So  lield  on  a  motion  to  i)iinish  tlie  tiereiidaiit 
for  contempt,  on  the  <;ronnd  tliathe  liad  viohited  an 
injunction  a^^ainst  him  ptiuJcuU;  lite  where  he  liacl 
changed  his  rradt'inarlv  after  tlie  injunction  was 
served  and  continued  his  l)usiness  with  the  new 
label,  the  plaintiil:'  believini^  the  use  ol'  the  new  label 
was  an  infringement  on  liis  mark.  ISOo,  N.  Y.  *SV/- 
parior  Courts  G.  T.^  Swift  v.  Dey,  4  Itobcrlson^ 
611. 

See  also  §  611. 


li 


■i: 


COPYRIGHT. 


.ii; 


§  200.  The  right  to  a  trademark  does  not  par- 
take of  tlie  nature  and  character  of  a  patent  or 
copyright.  1840,  N.  Y.  CL  of  Errori^^  Si'exckr. 
Senator,  Taylor  v.  Cari)enter,  2  Haudf.  Ch.  003  ; 
S.  C,  11  Paige,  292.     But  see  ^^  :32,  132. 

§  201.  In  a  suit  founded  on  the  copyright  act, 
where  both  parties  are  residents  in  New  York  and 
the  jphnntiff  fails  to  make  out  a  title  to  sue  under 
his  copyright,  the  question  whethei*  the  court  will 
interfere  to  prevent  the  use  of  the  title  of  the  woik 
in  fraud  of  the  i)laintiff  upon  i)rlnciples  relating  to 
the  good  will  of  trades,  cannot  be  entertained,  as 
the  court  has  no  jurisdictitm  of  such  a  question. 
A  copyright  is  given  for  tlie  contents  of  a  work, 
not  for  its  mere  title.  There  need  be  no  novelty  or 
originality  in  the  title.  The  title  or  name  is  an  aj)- 
pendage  to  the  work,  and  if  the  latter  fails  to  be 


'i[ 


ft 


:(^^. 


,,,  •! 


^n^^ 


rsfiw 


6R 


Costs. 


protected  the  title  goes  with  it.  1850,  U.  ^.Circuit 
CL,  ^\  i'.,  .Jollie  v.  Jaqnes,  1  BlaUh.  C:  C.  018. 

§  20:?.  The  I'act  tliat  a  trademark  hibel  is  copy- 
righted, l)ut  the  date  of  entry  is  not  given,  as  re- 
quired by  the  act  of  Congress,  is  of  no  importance 
in  a  suit  in  a  State  court  for  damages  for  imitation 
of  a  trademarl^.  1872,  ^upreine  Ct.  of  La.,  Wolfe 
D.  Barnett,  24  La.  Ann.  11.  97. 

§  203.  If  there  is  no  piiacy  of  a  copyrighted 
publication  there  can  be  no  remedy  under  the  coi)y- 
light  a(;t  for  the  use  of  a  title  which  could  not  be 
copyrighted  independently  of  the  book.  Obiter. 
1872,  U.  S.  ClrcuU  CL,  Me.,  Osgood  v.  Allen,  1 
Holmes,  185  ;  S.  C,  6  Am.  Law  T.  R.  {Y.  S.)  20. 


COSTS. 


§  208.  As  a  general  rule  the  costs  of  the  cause 
should  follow  the  general  result  of  the  cause,  but 
an  exception  will  be  made  where  a  party  has  estab- 
lished his  object  by  means  of  an  unnecessary  de- 
gree of  litigation.  Thus,  the  plaintiffs,  having  filed 
a  bill  to  restrain  the  defendants  from  using  certain 
trademarks  and  for  an  account  of  the  profits  made 
by  the  sale  of  goods  so  marked,  obtained  '■.ri  ,?; 
parte  injunction.  On  the  same  day  the 
received  a  letter  from  the  defendants'  s(\'.i  i 
which  the  defendants  stated,  through  tliei.'' 
tor,  that  they  had  never  used  the  marks  since  they 
were  aware  thiit  they  were  private  property  ;  and 
that  they  did  not  intend  to  use  them  again  ;  and 
they  offered  to  compensate  the  plaintiffs  for  any 
injury  they  might  have  sustained.     The  plaintiffs, 


•bill's 
/lici- 


Costs. 


6d 


nt! 


'••  -H 


however,  prosecuted  tlie  cause  to  a  hearinuj,  and 
then,  by  their  cuun.sel,  abandoned  tlioir  title  to  i\w. 
account,  because  it  was  so  small  as  not  to  be  worth 
taking.  The  Lord  Chancellor,  altliougli  he  made 
the  injunction  perpetual,  refused  the  plaint  ill's  the 
costs  of  tlu^suit.  1838,  Lord  Cli.  Cottkxiiam,  Mil- 
linoton  V.  Fox,  :}  Jlz/lne  d;  ('/■.  'SliS. 

^  209.  Where  costs  of  an  injunction  suit  for  the 
vi()lnti(m  of  a  trademark  are  increased  by  an  alle- 
gation in  the  bill,  which  is  nntrue.  the  court  will 
direct  such  increased  costs  to  be  paid  by  the  i)lain- 
tilf,  although  he  substantially  establishes  his  case. 
184G,  Vice  Ch.  BuucK,  Pierce  r.  Fraidvs,  10  JiirlaL 
25. 

§210.  Where  the  use  of  anothei's  tiadeiuark 
oi'iginated  in  mistake  and  not  in  design,  the  party 
may  be  exempted  from  damages  and  costs.  Ohilcr. 
1849,  K.  Y.  >'<iqHrhr  CL,  S.  T.,  Amoskeiig  Miinu- 
facturing  Co.  v.  Spear,  2  Sand/.  Siq).  CI.  099.  But 
see  >:^  458,  403,  472,  478. 

^  211.  An  interim  injunction  having  beini 
granted  to  restrain  the  defendant  from  continuing 
the  publication  of  a  song,  containing  a  colorable 
imitation  of  the  title-page  of  the  plaintitr's  song,  a!id 
the  defendant,  instead  of  submitting,  insisted  on  his 
right  to  continue  the  publication  of  his  song,  tind 
brought  the  nuitter  to  a  healing,  when  th?^  injunc- 
tion was  continued.  Ihld,  that  the  defendant 
must  pay  the  costs  of  the  motion  against  him  to 
continue  the  injunction,  although  it  appeared  that 
no  application  had  been  made  to  him  by  the  plain- 
tiflf  to  discontinue  his  publication  previously  to  the 
filing  of  the  bill.  18r)o,  Vice  Ch.  Wood,  Chappel 
V.  Davidson,  2  ICay  &  J.  123  ;  and  see  S.  C,  8  De 
G.  M.  &  G.  1. 


^H' 


m\ 


■I,-.' 


M  ! 


r  Sir, : 


70 


Costs. 


§  212.  In  oases  where  an  injunotion  restraining? 
the  nse  of  a  trademai'k  is  dissolved  hecause  tlie 
mark  is  false  and  fraudulent,  and  the  plaintiff  for 
that  reason  not  entitled  to  the  ])rotection  of  a 
court  of  equity  against  an  infringement  by  the 
defendant,  the  order  dissolving  the  injunction 
should  be  without  costs,  because  the  defendant 
ceitainly  has  no  title  to  receive  them.  ]8.")7,  -Y.  V. 
^Superior  cy.,  .S'.  7%  Fetridge  c.  Wells,  4  Abh.  Pr. 
144;  S.  C,  rSJ/oio.  Pr.  JiSo. 

S  213.  The  defendant,  insisting  on  an  adverse 
right,  after  being  made  aware  that  the  plain- 
tiif  had  been  defrauded  through  his  agency,  was 
ordered  to  pay  the  costs  of  all  <^lie  pioceedings, 
both  .it  hnv  and  in  equity.  1858,  V.  0.  Wood's 
01. ,  Farina  v.  Silverlock,  4  Ka//  d-  .T.  CoO. 

§  214.  A  suit  was  instituted  to  restrain  the  user 
of  a  trademark,  and  for  an  account.  No  applica- 
tion was  made  to  the  defendant  before  suit,  and  the 
defendant  said  he  would  have  desisted  if  apjilied 
to.  At  tlie  hearing  tlie  account  was  abandoned, 
but  a  perpetual  injunction  was  gianted.  lld(h 
that  the  defendant  must  pay  the  costs.  18r)8, 
RolU  in.,  Burgess?).  Hately,  26  Bear.  240. 

§  215.  The  defendant  innocently  used  the 
plaintiffs  trademarks,  and,  on  being  served  with 
the  bill,  removed  the  labels,  and  gave  an  under- 
taking not  to  sell  any  more,  but  refused  to  pay  the 
costs.  The  suit  was  continued  to  a  hearing,  and 
the  account  of  profits,  which  were  very  trifling,  was 
waived.  Ileld^  that  the  defendant  must  pay  ihe 
whole  costs  of  the  suit.  IS.IS,  Roll  a  Ct.,  ]5urgess 
v.  Hill,  20  Bea}).  244;  S.  C,  28  L.  J.  R.  {N.  R) 
Oil.  850. 

§  210.     AVhere  an  offer  is  made  by  the  defendant 


w 


Costs. 


71 


!iH'l:H 


III ' 


after  bill  filed  to  (liscoiitiiiiie  the  viso  of  tlu*  ]»l:iiii- 
tiif's  trjul<miink,  uiiloss  it  be  also  aecoiiiptinied  l)y 
an  oll'ei'  to  pay  tlie  co.ts  and  expense.-'  iij)  to  (ho 
time  of  the  oll'ei-,  or  to  let  the  cause  be  argaed  only 
upon  the  question  of  costs,  the  defendant  Avil)  not 
be  relieved  from  tlie  i)ayment  of  the  costs  of  the 
suit.  1804,  V.  ('.  Woofr.s  Covrf,  McAnd^'w  r. 
Bassett,  W  Jun'.si  {X.  S.)  402  \  S.  C,  10  L.  T.  li. 
(iT.  <S'.)  (5.");  S.  C,  ailirmed  on  appeal,  10  Jurist^ 
(iT.  -s'.)  TmO;  S.  C,  3;]  L.  J.  (iY.  ^V)  V/i.  oCl  :  S.  ('., 
12  W.  R.  777  ;  S.  C,  10  Lmo  Times  (X.  S.)  442. 

g  217.  Tlie  right  to  an  injunction  ordinarily 
carries  with  it  the  right  to  costs;  but  if  the  plain- 
tilt'  asks  for  the  costs,  and  for  something  more  than 
he  is  entitled  to,  he  will  lose  the  costs  he  might 
otherwise  have  received.  18G4,  Master  of  the  Hot  Is, 
Moet  V.  Couston,  10  Law  Times  (iV.  X)  30o ;  S. 
C,  3;}  Bea(\  578. 

^  218.  The  defendant,  an  infant,  bad  advertised 
for  sale  and  sold  second-hand  iron  safes,  which  he 
represented  as,  and  were  marked  as  manufactured 
by  the  i^laintiif.  They  were,  however,  sj)urious  and 
inferior  articles.  The  defendant  submitted  to  an 
injunction,  lletd.,  tliat  defendant  should  pay  the 
(!osts  of  the  suit.  1SG5,  llotls  Ct.,  Chubb  i).  'Grif- 
fiths, 35  Beai\  127. 

^  219.  B  filed  a  bill  against  C  to  restrain  an 
infringement  of  a  trademark,  and  obtained  an 
interim  injunction  ;  before  the  hearing  of  the  cause 
C  offered  to  enter  into  an  undertalving  to  refrain 
from  using  the  trademark  and  pay  all  costs,  but 
declined  to  publish  an  apology  (insisted  upon  by  B) 
in  the  newspapers.  The  court,  at  the  hearing,  while 
decreeing  a  perpetual  injunction,  fudered  (in  con- 
sequence of  B's  refusing  C's  otter)  each  party  to 


-\ 


I-   i 


■fff^r^^F 


72 


Costs. 


pay  his  own  costs.     1800,  Vice  Ck.   ShtarCfi  Cf., 
IIiKlsoii  V.   15<umett,  14  Law   Times  It.  yX.  K)  008. 

Jj  '3'2il  ir  :i  irador  imitates  anotlicr  ]ii'rs()n"s  label 
or  ti-:i(leinark,  and  .sails  so  near  the  uiiul  as  just  to 
avoid  an  injunction,  though  tlie  couit  does  not 
grant  the  injunction,  it  will  not  willingly  give  him 
any  costs  oi'  the  proceedings.  1800,  JiolLs  Court, 
Bass  1).  Dawber,  19  L.  T.  li.  {N.  >S'.)  020. 

^221.  The  defendants  with  j)erfect  bona  fides 
liad  adopted  a  trademark  bearing  a  general  re- 
semblance to  the  plaintiff's,  but  dill'ering  from  it  in 
several  particulars  so  that  nobody  could  be  deceived 
who  looked  at  them  attentively.  Before  and  after 
suit,  defendants  offered  to  alter  their  trademaik, 
so  as  to  make  it  distin(!t  from  the  plaintiffs.  The 
offer  before  suit  was  not  accepted.  The  trourt  was 
of  f)pinion  that  the  offer  should  be  adheied  to,  and 
dismissed  the  bill  with  costs  to  the  defendants. 
Ibid. 

^  222.  A  defendant  whom  the  court  held,  on  the 
chief  point  in  issue,  to  have  been  guilty  of  a  fraudu- 
lent misrepresentation,  was,  though  successful  on 
another  point,  ordered  to  pay  the  whole  costs. 
1809,  Vice  Ch.  James'  Ct.,  Wheeler  &  Wilson 
Manufacturing  Company  v.  Shakespear,  39  L.  J.  II. 
{N.  S.)  Ch.  30. 

§  223.  A  trademark  has  not,  of  itself,  as  dis- 
tinct from  the  value  of  the  article  of  which  it  is  the 
trademark,  any  money  value  which  can  constitute 
a  money  basis  on  which  to  compute  an  extra  allow- 
ance. 1871,  N.  Y.  Superior  Ct.  G.  T.,  Coates  «. 
Coddard,  34  N.  Y.  Superior  Ct.  (2  /.  c6  S.)  118. 

§  224.  Bill  by  the  jjlaintiif,  a  merchant,  to  restrain 
the  defendant,  an  agent,  (who  received  goods  from 
the  continent,  and  forwarded  them  to  parties  in 


Costs.  7.'? 

Enti^lnnd  for  n  com:nission,)  from  forwu-diiii^,-  ,u'  >.  .,.ls, 
l)(>Mi'in^'  a,  for^'cd  imitation  of  tlu^  plaint iif's  tiadc- 
mai'iv  On  a  lii'st  application,  t  he  dclVndant  readily 
•^•ave  the  names  of  the  pei'sons  from  whom  and  l(» 
wliom  the  ^'oods  Aver(  sent,  hut  declini^d  to  i;i\(»  an 
inKhMtakin'A"  not  to  *'.ke  them  onr  of  llie  dock. 
//('/(/,  that  uiid(!i' the  circumstances  the  derenda::t 
should  neither  pay  nor  receive  costs.  S(  iiihh\  il" 
he  liad  refused  to  give  liis  princiiiai's  name,  he 
woukl  have  liad  to  pay  costs,  and  il"  he  liad  niider- 
takeii  without  suit  in  the  terms  prayed,  he  woukl 
have  been  entitled  to  Ids  costs.  A  j)ers(»n  to  whom 
the  floods  were  sent,  and  who  was  innocent  d' 
fraud,  was  made  a  party.  Iltla,  that  he  was 
entitled  to  his  costs,  Tlie  jiei'sons  by  whom  the 
goods  were  sent  were  in  c(mimunication  with  th<'ir 
agents  during  tlie  proceedings,  and  liaving  no 
property  "witlnn  the  jnrirdiction,  except  the  goods, 
were  not  made  paities  to  the  suit.  Held,  that  the 
plaintilFs  costs  sliould  be  diarged  on  tlie  goods, 
with  liberty  for  the  owners  to  intervene.  ISTl, 
Itolls  (Jl.,  xVllones  v.  Elkan,  and  Cpmann  i\  Eikan, 
40  L.  J.  li.  (xY.  ^'.)  Ch.  475  ;  S.  C,  L.  li.  VI  F.(/.  140  ; 
S.  C,  19  W.  li.  807;  S.  C,  aflirmed,  41  />. ./.  JL  (iV. 
-S'.)  C/i.  240;  S.  C,  L.  11.  7  Vh.  i;5();  S.  C,  20  ^Y. 
R.  131  ;  S.  C,  25  L.  T.  R.  {K.  K)  813. 

§  225.  The  court  will  give  no  costs  on  either  side 
in  a  case  where  both  plaintiff  and  (kdVndant  are 
engaged  in  the  manufacture  of  an  article  intended 
to  be  used  to  deceive  and  nuslead  the  public.  1875, 
C7i.  Ct.  of  Appeal.,  Eastcourt  v.  Estcourt  lioj) 
Essence  Company  (limited),  44  L.  J.  It.  (/Y.  S.)  C h. 
223;  S.  C,  L.  li.  (10  Ch.)  270  ;  S.  C,  32  L.  T.  R. 
(iY.  /^'.)80;  S.  C,  23  W.  li.  313;  reversing  S.  C, 
31  L.  T.  R.  (xY.  8.)  567. 


•il 


»ll 


VY 


l:.  i 


'      ^ 


74 


Ckimks. 


^  2:2(5.  Costs  irl'iiscd  wliere  pljiinliir  liad  doljiyecl 
(^omiiH'iiriiiii;  suit,  1870,  A\  )'.  Xniti'tnir  r/., 
Si'ivitil  Tcnn,  Amoskcji^  C()m])i«iiy  ti.  Garner,  4 
Aiaciicaii  Laic  Tltius  11.  (iV.  aV.)  170. 


CRIMES. 

§  230.  An  indictment  for  false  pretenses  will  be 
sustained  by  evidence,  that  the  prisoiiei-  liail  sold 
to  the  prosecutor  blacking?,  wliich  he  had  asseited 
to  be  Everett's  l*reini«M',  and  which  bor<'  a  label 
nearly,  but  not  precisely,  inutatini;-  Everett's  labels, 
the  said  blacking  not  being  Everett's  I'reinier,  but 
a  spurious  manufacture  of  his  own.  V6h\\,  Yurk 
Assizes^  Rfg"-  ''•  Duiidas,  0  Cox  Crim.   C(fs-r.s\  oSO. 

§  231.  Hi'inbh'.,  that  if  i\  man  in  the  course  of  his 
trade  or  business,  ()])enly  cairied  on,  i)Uts  a  false 
mark  or  token  upon  a  spurious  article  so  as  to  \){\<s 
it  oif  as  a  genuine  one,  and  the  article  is  sold  and 
numey  obtained  by  means  of  the  false  maik  or 
token,  he  is  guilty  of  a  cheat  at  common  law. 
18,")8,  CI.  of  Crini.  Apimal.^  R<3g.  y\  Closs,  DcarHlcij 
&  B.  400. ' 

§  232.  One  B  was  in  the  habit  of  selling  baking 
powders,  contained  in  printed  wrappers,  entith-d 
"13's  Baking  Powder,"  and  liaving  his  ])iiiUed 
signature  at  tlie  end.  The  prisoner  got  luinted  a 
qiuintity  of  wrappers  in  imitation  of  those  of  J5. 
only  leaving  out  B's  signature,  and  sold  spurious 
powders,  done  up  in  said  wrappers,  Jis  B's  powders. 
Ilthl,  that  the  prisoner  was  not  guilty  of  forging 
thewrai)pers  or  uttering  I'orged  wrappers,  though  lie 
might  be  indictable  for  the  fraud  on  a  charge  of 


I)ama(;k>, 


ti> 


()htn\n\n<i;  irionoy  by  (also,  \m>Ums(':s.  I8.")S,  Cotirl 
of  t'fiiii.  Apptal,,  Jlc;;-.  r.  Siiiilh,  DiarHlvij  d-  B. 
hm  ;  S.  C,  27  Laio  Journal  Mag.  C.  '22:). 

See  j;  U02. 


DAMAGES. 


§21^5.  The  owner  of  ti  tiadcmaik  is  eiitill-jd  to 
nominal  damages  for  the  viohitioii  of  his  trade- 
mark, althoiiu'h  it  is  not  shown  tliat  h;;  lias  sus- 
tained actual  dama,ii:«%  an;l  althoiiixh  the  delV-ndant's 
articles  ar(^  not  inferior  in  (|uality  to  his  own, 
18:«,  CY.  o/'  Kiiiff.s  JirHrft,  niolinld  r.  Payne,  1 
iVer.  &  Man.  unii ;  S.  C,  4  Barn,  d  Ail.  410;  S. 
C,  :jz.  ./.  11.  {N.  H.)m. 

^  2JJ0.  Vindictive  damages  are  not  to  be  al- 
lowed in  an  acti(m  for  the  violation  of  a  trade- 
mark. 184(;,  U.  S.  Cucuil  CY.,  Mass.,  Taylor  w. 
Carpenter,  2  Woodb.  t£-  M.  1. 

^^  2'iM.  The  i)roiier  measure  of  damages  is  the 
profits  realized  upon  the  sales  of  goods  to  which 
the  spnrioiis  marks  were  attached  ;  and  it  is  of  no 
consequence  that  such  goods  were  equal  in  {puility 
to  the  genuine.     1846,  Taylor  v.  Cai'pentei',  ihid. 

%  238.  Where  the  nse  of  another's  trademaik 
originated  in  mistake  and  not  in  design,  the  i)arty 
may  be  exempted  from  damages  and  costs.  Obiter. 
1849,  jS'.  Y.  tiuperior  Ct.  8.  T.,  Amoskeag  Manu- 
fscturing  Company  «.  Spear,  2  8and.  Hvpcrior  Ct. 
mQ.  But  see  §§  452,  459,  462,  464,  472,  474,  478, 
830,  1003. 

§  239.  In  an  action  on  the  case  brought  against 
the  defendant  for  holding  himself  out,  by  using  the 
name  "Kevere  House"  on  his  coaches,  as  having 


:t 


1:1 


«T^ 


1 


76 


Damages, 


the  patrona.f^e  of  that  house,  for  the  conveyance  of 
passenf!;er.s,  when  the  plaintiffs,hya,i?reement  with  the 
lessee  of  the  llevere  House,  had  that  exclusive  right. 
Held,  that  if  the  jury  found  for  the  plaintiffs,  they 
would  be  entitled  to  snch  damages  as  tlie  jury, 
npon  tli(»  whole  evidence,  shoukl  l)e  satislied  they 
haxl  sustained  ;  that  the  damage  would  not  be  con- 
linod  to  the  loss  of  such  X)assengers  as  the  plaintiffs 
could  prove  had  actually  been  diverted  from  their 
coaches  to  tliose  of  the  defendants,  but  that  the 
jury  would  be  justified  in  making  siu'h  infei-ences 
as  to  the  loss  of  passengers  and  injury  sustained  by 
the  i)laintiffs,  as  they  might  think  were  warranted 
by  the  whole  evidence  in  the  case.  IH.")!,  J^'ffpreme 
Judicial  CI.  of  Mass.,  Marsh  v.  Billings,  7  Cash. 
322. 

g  240.  In  an  action  to  restrain  the  violation  of  a 
trademark,  as  to  the  issue  on  the  qnestion  of  dam- 
ages, a  party  is  not  privileged  from  answering  a 
question  which  will  reveal  the  materials  with  which 
his  compound,  Avhich  he  sought  to  protect  by  the 
trademark,  was  prepared.  18G0,  iV^.  Y.  i^upcrior 
CI.  G.  T.,  Burnett  v.  Phalon,  11  iVbb.  Pr.  157;  S. 
C,  19  How.   Ft.,  030. 

^  241.  The  expenses  of  obtaining  an  injunction 
cannot  be  embraced  within  the  range  of  damages 
for  the  infringement  of  a  trademaik.  1801,  i\'.  V. 
i^upcrior  CL  G.  T.,  Burnett  i\  Phalon,  21  How. 
Pr.  100;  S.  C,  12  Abb.  Pr.  186. 

^  242.  An  exception  to  the  exclnsicm  of  an  offer 
to  prove  a  loss  of  danuiges  by  reason  of  the  defend- 
ant's infringement  of  a  trademark,  coupled  wilh  the 
condition  that  the  wirness  (party  plaintiff)  would 
not  disclose  the  ingredients  of  the  manufactured 
article   containing  the  trademark,  cannot  be  sut;- 


Damages. 


77 


tained,  wliore  the  couit  liave  previously  decided 
that  ii"  tiie  phiintiif  elaimed  damnges  by  reason  of  a 
k)ss  of  prolits,  he  must,  if  lequij-ed,  slate  the  iu- 
^•redients  of  his  comi)ound,  although  he  was  jiot 
('oini)elled  to  do  so.  18G1,  Burnett  v.  Plitdon, 
ibid. 

§  243.  Where  a  defendant  is  ordered  to  account 
foi  the  prolits  made  by  liim  tln()Ui2,h  a  wrongful 
use  of  the  plaintiff's  tradenunk,  he  cnnnot  be 
charged  with  bad  debts  as  profits  ;  but  on  tlu^  other 
hand,  he  cannot  cliarge  the  plaintiff  witli  the  costs 
of  manufacturing  the  goods  in  respect  of  which  the 
bad  debts  were  incurred.  1804,  Vice  Ck.  \V<>of/\s 
CL,  Edelsten  v.  Edelsten,  10  L.  7\  R.  {N.  S.)  780. 

§  244.  Tlie  bill  in  the  cause  had  been  tiled  to 
restrain  the  infringement  of  the  ])lnintiifs"  trade- 
mark, and  a  decree  had  been  ol)tained  for  an  in- 
junction. A  decree  for  an  account  of  i)rolits  had 
been  ofi'ered  by  the  court  and  refused  by  the  plain- 
tiffs, who  elected  to  take,  in  lieu  thereof,  an  inquiry 
as  to  damages  arising  from  the  use  by  the  defend- 
ants of  their  tiademark.  On  such  inquiiy,  the 
plaintiffs  did  not  prove  direct  damage,  and  could 
not  show  lo  what  extent  their  trademark  had  been 
used,  but  claimed  damages  equal  to  all  the  prolits 
made  by  tlie  defendants  on  all  their  sales  of  cloth. 
Jleld,  that  they  were  not  so  entitled,  and  had  not 
given  sufhcient  proof  of  any  damage  sustaincnl  ll)y 
them.  Tliat  on  such  an  inquiiy,  tin;  onus  lies  on 
tlie  plaintiffs  of  proving  some  special  damage  by 
loss  of  cus'om  or  otherwise,  and  it  w^ii  not  be  in- 
tended, in  the  absence  of  evidence,  that  the  amount 
of  goods  sold  by  the  defendant  under  the  iVaudu- 
lent  trademark,  would  have  been  sold  by  the  plain- 
tiffs, but  for  the  defendant's  unlawful  use  of  the 


I: 


IF 


...J 


m 


^1 


W|^^ 


78 


Damages. 


plaintiffs'  rrinrk.  1805,  V/ce  Ch.  Wootr s  CL, 
Lo:itlier  Cloth  Company  (limited)  v.  riiisciilield,  113 
L.  T.  n.  {N.  S.)  427  ;  S.  C,  L.  Ji.   1  Ef/.  209. 

^  24.").  An  aiTount  of  prolits  refused  on  tlie 
p-ound  of  delay  by  the  ]>laintiffs  in  commencing 
the  suit.  180."),  Vice  Vh.  \Vo«)(/\s'  CL,  Ilanison  /'. 
Taylor,  II  JuriH{N.  .s:)4()8;  S.  C,  V2  L(ttP  Times 
{N.  /S'.)  339.  Approved  and  followetl  ;  see  §  251, 
infra. 

^  240,  In  an  action  to  recover  damages  for  a 
violation  of  plaintiffs  trademark,  the  profit  actually 
realized  by  defendants  from  the  sales  of  the  spur- 
ious article  nnd<H'  the  simulated  trademark,  is  a 
proper  measure  of  damages,  bnt  the  recovery  of  the 
plaintiff  is  not  limited  to  the  amount  of  such  pro- 
fits, 1871,  i^H.preme  Ct.  of  California^  Graham  v. 
Plate,  40  Cal.  593. 

§  247.  Bill  in  equity  for  an  injunction  and  relief 
for  infringement  of  a  tiademark.  The  proof  showed 
that  the  plaintiff  had  an  established  trade  in  the 
city  where  the  articles  with  simulated  labels  Avere 
made  and  sold  by  the  defendants,  and  that  their 
sales  had  fell  off  in  that  i)lace,  in  an  amount  at 
least  equal  to  sales  made  by  the  defendants  of  their 
articles,  Ilild,  that  the  plaintiff  might  recover  as 
damages  the  profits  he  would  have  made  on  the 
number  of  bottles  which  the  defendants  actually 
sold  of  their  own  manufacture,  the  court  being 
satisfied  that  the  plaintiffs  sales  had  been  reduced 
to  that  extent  by  the  infringement.  1871,  U.  S. 
Circidt  Ct.  Nebraska,  Hostetter  d.  Vowinkle,  1 
DlUon,  329. 

§  248,  Damages  ought  not  to  be  recovered 
against  a  defendant,  wdio,  in  ignorance  of  tlie 
plaintiff's  rights  and  claims,  has  used  a  trademark 


Dama(;k^. 


ro 


1 

r' 


bel()n,2:ini]^  to  the  plainfifT.     18T'2,  X.  )'.  S///>j-c>/(r  Cf. 
Cirr/n'/,  Wcrd  r.  IVtci-son,  12  Ahb.  Pr.  ^\  K  178. 

vj  240.  On  an  assessment  of  daniai^es.  l)y  ivason 
of  an  in!'i'in<;'enient  of  a  trademark,  tlie  referee 
found  that  i)lainti(Fs  djimni^es  Averi*  e{iii;d  to  thr, 
prolifs  they  could  !iav(^  made  froni  the  uiannfaetnre 
and  sale  of  tlie  same  numbei'  of  artieh's  which  (h'- 
fendant  lind  sold  with  the  simnhited  ir:i(h>ui:irlv 
thereon,  llthl^  on  a])peal,  tliat  there  was  no  erroi* 
in  said  assessment.  187."),  lA".  Y.  ^u[)r('iii(iH.  ^L  7'., 
Fli'.sl  D('p(.^  Dt'(\  'JO,  Faber  /j.  Ilovey,  ii  in'cjXHird. 

^  "27)0.  Where,  in  an  a('ti(m  for  violatinu' a  cov- 
enant not  to  miinufacture  a  certain  ai'ticle,  plain! iff 
merely  cliarges  that  defendant  lias  diverted  i)lain- 
tilf  s  patrouai^e  to  liimself,  and  thereliy  injured  or 
destroyed  the  good  will  of  plaintilf's  business,  wit'h- 
out  alleging  any  claim  to  the  profits  made  l)y  (h»- 
fendant  (m  articles,  tiie  exclusive  right  to  manufac- 
ture wliich  belonged  to  phiintiff,  or  to  the  profits 
derived  from  the  use  of  a  trath'mai'k,  the  exclusive 
right  to  which  was  In  i)Iaintilf,  his  measure  of  dam- 
ages is  not  what  defendant  has  gained  but  what  he 
has  lost  l)y  the  breach,  whether  defendant's  profits 
have  been  greater  or  less  than  that  amount.  And 
in  ascertnining  i)lainiifrs  losses,  defen(hint"s  prolits 
ma3'  be  given  in  evidence  in  connection  with  the 
diversifm  of  customers  from  plaint ilf  to  defendant, 
and  the  amount  of  plaintiirs  i)urchases  and  manu- 
factures and  sales,  and  any  reduction  in  the  price 
of  articles  sold  in  consequence  of  the  unhiwfnl  com- 
petition. 187(5,  SitjjreiHe  CI.  of  Missouri.,  Peltz 
V.  Eidiele,  62  Mo.  171. 

§  251.  Damages,  account  of  profits,  and  costs 
refused,  where  plaintiff  liad  delayed  commencing 
suit.     1876,  N.  Y.  Supreme  Ct.,  k  T.,  The  Amos- 


i 

n   < 


m^ 


iiWi 


I' 


fp^l 


80 


Deception — Defenses. 


keag  Manufacturing  Company  v.   Garner,  4  Am. 
Law  Times  Ji.  (if.  S.)  176. 

See  also  Discovery. 


DECEPTION. 

See  Evidence  ;  Intent  ;  and  Imitation. 

For  cases  of  deception  on  the  part  of  the  plaintiff, 
see  Misrepresentation. 

When  evidence  of  actual  deception  of  purchasers 
will  be  required  in  order  to  sustain  plaintiff's  right 
of  action,  see  §§  286,  289,  296,  297,  340,  343,  346, 
349,  360,  368,  369,  377,  381,  389,  391,  395,  399,  400, 
401,  447,  455,  494,  586,  850,  906. 


DEFENSES. 

I. — Misrepresentation  on  the  part  of  the  plaintiff. 
See  Misrepresentation. 

II. — Laches,  license,  acquiesence,  limitation. 
See  those  titles. 


III. — Prior  use. 


See  Prior  Use. 


IV. — Words  in  common  use,  generic  terms,  de- 
scriptive names,  geographical  names,  etc.,  cannot 


Defenses. 


81 


be  protected  and  their  use  will  not  be  enjoined,  ex- 
cept in  certain  cases. 

See    WoiiDs ;    Name. 

V. — What  are  not  ftood  defenses. 


■1  it ,..,, 


§  2.")2.  Neither  alienage  of  the  ])ers()n  wln)se 
trademarlvs  are  simulated,  nor  the  fact  that  he 
resides  abroad,  constitute  a  defense. 

See  Ai.rKXs. 

§  2.");j.  To  }in  action  for  the  infringement  of  a 
trach'mark  it  is  wholly  immiiteri:d  whether  tlu?  sim- 
ulated article  i'  or  is  not  of  equal  goodness  and 
value  with  the  genuine  article. 

See  Quality. 

^  2.')4.  It  is  no  excuse  or  defense  that  others  have 
used  the  i)laintiff  s  ti-ademai'ks  ;  this  rathei-  aggra- 
vates than  excuses  the  misconduct.  Taylor  i\  Car- 
penter, 13  '^loi'i/,  4r>8  ;  Coats  v.  llolbrook,  2  Haitt/f. 
Ch.  586  ;  and  see  Acquiesexce. 

^  25.").  It  is  no  answer  tluit  the  mnker  of  the 
spurious  goods,  or  the  jobber  who  sells  fiiem  to  the 
retailers,  informs  those  who  pui-cliase  that  the  arti- 
cle is  spurious  or  an  imitation.  184,"),  Vice  Ch. 
Saxdford,  N.  F.,  Coats  t.  llolbrook,  2  f^andf.  Ch. 
586 ;  S.  C,  3  N.   Y.  Ler/.  Ohs.  404  ;  and  see  §  860. 

§  256.  Ifelr  :  That  a  defendant  could  not  esciii)e 
his  liability  for  the  infringement  of  ;i  ti-jidemaj'k 
by  cautioning  his  shojmien  to  explain  to  j)urcliasers 
that  his  article  was  not  the  same  as  the  plaintilf's, 
because  he  could  not  secure  that  retail  dealeis  pur- 
chasing from  him  would  give  the  same  information 
to  their  customers.  1855,  Vice  Ok.  Woof/'.s  CY., 
Chappell  r.  Davids(m.  2  Art//  dJ.  128  ;  S.  C,  Okav 
eery  CL  of  App.,  8  De  G.  M.  &  G.  1. 
6 


•  ■  -m- 
i'  *  If- it. 


iii|i!> m 


82 


Definitions — Desckiptiv e  Name. 


§  So?.  As  to  whether  want  of  an  intent  to  deceive 
or  defraud  constitutes  a  defense,  see  Ixricx r. 

^  2i")8.  It  is  no  defense  that  the  defendants  liave 
not  used  all  the  i)laintiffs"'  labels  ;  it  is  siilficicnl  if 
there  has  been  a  violation  of  the  plaintiffs'  rights 
by  the  defendant  in  imitating  and  usini!;  any  of  the 
hibels  with  a  view  to  deceive  the  public.  1844,  67/- 
cail  CL  U.  >S.,  Mass.  D/'sL,  Taylor  c.  Carpenter,  3 
S/orf/,  458. 

See  Imitation  ;  Exclusive  Use  ;  Name  ;  Publi- 
cations ;  Injunction  ;  Partnership  ;  etc. 


DEFINITIONS. 

See  General  Principles  and  Definitions,  §§ 
1-37. 


DELAY. 


Wlien  ground  for  refusing  an  injunction. 
Limitation  ;  Laches  ;  Acquiescence. 


See 


DEMURRER. 


See  Pleading. 


DESCRIPTIVE   NAME. 
See  Words  ;  Name  (Descriptive  Name). 


Dkvicks. 


83 


'1  ;• 

'.  * 

DEVICES. 

§  2G0.  The  plaintiir  had  been  in  the  hiibir  df 
u.sln,!;'  M  lion  stamp  n])on  cei-tain  flotlis  of  their 
nianHl'aeture,  made  ror  the  Chinese  niaik(^t,  upon 
otliers  an  eh'pliant  sliunp.  These  ^-oods  were  well 
known  in  tiie  trade  as  "  the  lion  chop,"  and  "the 
elephant  cho])/'  It  was  hekl  that  such  marks  wt^re 
marks  ol'  (piality,  and  that  theie  was  sneh  a  eohtr- 
able  imitation  as  to  injure  the  plaintiff's  trade  by 
the  greater  elieapnes.s  oi"  the  inferior  article,  as  well 
as  by  loss  of  the  character  of  tlie  plaintift"s  uoods 
in  tlie  market.  The  injunction  gi'anted  was  not  to 
restrain  altogether  the  use  of  such  marks  as  the  lion 
or  elephant,  by  any  other  i)arties  than  the  plaintiffs, 
but  to  restrain  the  use  of  them  in  any  maimer 
which  might  rejHesent  the  goods  so  marked  to  he 
the  plaintiffs.  Ilenderscm  /'.  ,loip  (V.  (■.  Wood, 
June  22,  iSOl),  cited  \\\  LJoi/d  on  Trcr/f  i/;(ii7iS\  p.  ;")4. 

^  201.  The  illustration  of  a  crown,  ai)plied  as  a 
brand,  by  stencil  plate  or  die,  to  cases,  casks  or 
vessels,  containing  paints,  or  printed  on  hibels  or 
wrappers  applied  to  such  vessels,  or  on  business 
cards,  notices  or  placards,  advertising  such  paints, 
may  be  a  lawful  trademark,  for,  when  used  in  con- 
nection with  paints,  it  may  designate,  by  associa- 
tion in  the  minds  ol  purchasers  of,  and  deah'is  in 
such  article,  the  origin  or  ownershij)  of  such  article 
as  being  in  a  iiarticular  manufactuier.  1872.  (J. 
S.  Circuit  CL  N.  T.,  Smith  /'.  Reynolds,  K> 
Blatch.  a  a  100. 

§  202.  Plaintiff  and  defendant  were  refiners  of 
lard,  and  packed  the  same  for  market  in  tin  vessels. 


'^^ffS/. 

■■'¥:■ 

<f 

]r— 


84 


Devices. 


PlninfifT's  device  was  stamped  in  the  metal  in  a 
ciiciihu"  form,  and  contained  tlie  ti^-ui'c  of  a  ])ig  or 
hog,  and  llie  woid  "  tn-demark,"  adjoining  it,  also 
his  name  and  the  name  oi'  the  aiticle,  viz.,  "prime 
leiil'  lard."  Defendant's  (h3vi(u^  was  stamped  in  the 
metal,  in  a  circular  form,  and  contained  the  1i'>;iire  of 
a  boar  surmounting  a  heinisi)iiere,  and  the  word 
"trademark,"  adjoining  the  same,  also  his  name 
and  the  words  "prime  leaf  lard."  Plaintilf  claim- 
ed his  device  to  his  exclusive  use  as  a  trademark  to 
be  placed  on  packages  of  refined  lard  made  by  liim, 
and  sought  to  enjoin  the  defendant  in  the  use  oi 
his  device.  It  ai)i)earing  from  the  evidence  : — 1.  That, 
although  the  plaintilf  ckiimed  to  have  used  his  de- 
sign for  lifteen  years,  yet,  on  the  witness  stand,  he 
could  not  tell  who  invented  the  device  for  use,  on 
either  crude  or  refined  lard.  2.  That,  since  184."), 
the  figure  of  a  pig  or  swine  had  been  extensively 
used  on  packages  of  natural  or  crude  lard,  by 
many  persons  ;  and,  since  18r)0,  on  packtiges  of  re- 
lined  lard  packed  in  wooden  vessels;  and  that, 
from  1800  to  1808,  one  Brewster,  a  relinei",  used  the 
said  device  on  tin  boxes,  aitlnjugh  not  stamped 
into  the  metal  of  the  i)ackages  ;  and,  for  a  long 
time  past,  h'/i  pac/i'ar/e.s  had  been  used  by  the  ti'ade, 
for  packing  and  shipping  reiined  lard.  Ildd,  that 
these  facts  establish  in  the  plaintilf  no  exclusive 
right  to  the  use  of  the  figure  or  device  of  a  pig  or 
swine,  on  tin  packages  of  crude  or  reiined  lard. 
'J'here  is  nothing,  either  in  the  device  itself,  or  in 
the  coTubiniition  in  which  it  is,  (U'  has  been  used  by 
the  plaintilf,  which  gives  him  any  exclusive  right 
to  the  same.  1874,  N.  Y.  .Superior  Ct.  G.  7\, 
Popham  V.  Wilcox,  38  iT.  Y.  Superior  CI.  274; 
and  see  S.  C.    at  8.    7'.,  14  Abb.  Pr.  {N.  S.)  200. 


i      ) 


DiSCOVEKY. 


85 


§263.  A  device  repiesentinj^' nn  orl)  ri.siiig  l'i(»in 
the  water,  protected.     See  j^  008. 

§  204.  Where  the  phuntiif  hiid  lust  adopted 
and  npju'opriated  tlie  device  reprcsiMirinu'  I'ays  ol' 
lig'ht,  or  sun's  rays,  as  a  trach'inark  for  ciuarcttes, 
lie  was  protected  by  injunction  in  its  exciiisive 
use.  1877,  A^.  Y.  Hap  rem  e  VI. ^  *">'.  7'.,  Kinney  (\ 
Basch,  unrei)orted. 

See  also  Imitation,  g  32r>  to  ^  409,  and  ^^  ;J27, 
359,  372,  376,  382,  428,  094,  980,  1035. 


*: 


DISCOVERY. 

§  ^70.  The  i^laintift"  conii)lained  that  the  defend- 
ant had  sold,  under  the  plaintiff's  nani(%  sewing' 
machines  which  had  not  been  manufactured  by 
him,  and  he  sought  a  discoverv  of  all  the  machines 
sold  by  the  defendant,  the  price,  tli<^  i>roiit,  the 
names  of  the  purchasers,  and  othei-  ])aiticulars. 
The  defendant  refused  to  answei',  saviiia,'  that  \w 
would  thereby  disclose  the  names  of  his  customeis 
and  the  secrets  of  his  trade.  Jldd.  that  he  was 
bound  to  answci\  1802,  7^V/,s'  CL,  Ilovve  r.  McKer- 
nan,  30  Bcrrr.  547. 

^  271.  Where  a  deci'ee  has  been  made  directing 
the  defendant  to  account  for  all  goods  sold  by  him 
with  a  particular  stamp  thereon,  he  is  comi)el]abIe 
to  disclose  the  names  of  all  persons  to  whom  he  has 
sold  any  such  goods  ;  and  if  he  be  unable  to  give 
such  information  precisely,  lie  may  then  (but  not 
otherwise)  be  required  to  disclose  the  names  of  all 
peisons  to  whom  he  has  sold  any  goods  which  he 
will  not  swear  positively   were  unstamped.     180L' 


t 
,      1 

*4 

I 

*• 

i!    '■ 

i 

'      « 

ii.. 

>    'H 

*  K' 

^f  • 

li 

'   m 

i 

»    ^^ 

''1' 

:f 

f , 

i 

! '  f ; 

i 

\ 
r 

■ 

■     ■■>" 

'^1! 

'.         ■     , 

\   v.. 

'■S- 

'  'Tr'- 

my 

rh 

Mi,: 

W\      I^P 


If 


86 


Discovery 


V.  C.  WoofTs  Ct.,  Leather  Cloth  Conipriny  (limired) 
V).    Ilirschfekl,   1  //.  (£•  M.  2<X)  ;    S.  C,  'll    ^V.  L\ 

i  272.  Although,  in  coiisideiiiii;'  whether  the 
rule  that  a  defendant  who  submits  to  give  dis- 
covery mast  give  full  discovery,  is  to  l)e  Mi)plied, 
the  court  does  not,  in  geneial,  weigh  nicdy  tlie 
materiality  of  the  discovery  sought  ;  still,  if  the 
discovery  is  such  as  might  ho  used  for  jjurposes 
prejudicial  to  the  defendant  irresjjectiveof  the  suit, 
the  court  will  look  nairowly  to  the  question, 
whether  there  is  a  reasonable  i)r()si)ect  of  its  being 
of  material  service  to  the  plaintiff  at  the  liearing. 
1871,  CL  of  Apj),  1)1  Chan.,  Carver  v.  Pinto  Leite, 
20  We(klf/1L  184;  S.  C,  41  Law. J  our.  {N.  S.)  C/i. 
92  ;  S.  C.,  L.  M.  7  Ch.  90  ;  S.  C,  2:)  /..  T.  li.  (.T. 
8.)  7'21>. 

^  273.  The  defendants,  in  a  suit  to  restrain  the  in- 
fringement of  trademarks,  having  sealed  up  certain 
l)arts  of  entries  and  letters  admitted  to  relate  to 
the  matters  in  question  in  the  cause,  were  ordered 
by  the  Duchy  Court  of  Lancaster  to  unseal  the 
names  of  customers,  and  of  x)laces,  and  tlie  prices, 
forming  parts  of  such  entries,  and  to  unseal  the 
X)ortions  of  letters  and  copies  of  letters  which  c(m- 
tjiined  the  names  of  the  writers  and  of  the  persons 
to  whom  the  letters  which  were  copied  weie  sent, 
and  the  places  to  and  from  which  the  letters  weie 
sent,  and  the  description  of  the  marks  to  be  placed, 
or  which  had  been  placed,  on  the  goods  relV^rred  to 
in  such  letteis.  JleM,  on  appeal,  that  the  defen- 
dants ought  not  to  be  comi)elled  to  disclose  the 
names  of  customers,  or  the  names  of  persons  to  or 
from  whom  letters  were  sent  or  received,  or  any 
prices  inasmuch  as  such  discovery  might  be  used  in 


Emulkm. 


87 


a  iTuinner  prejudicial  to  the  det'endants  in  their 
trade,  and  Vvas  not  likely  to  assist  the  ])laintills  in 
niakin<^  out  their  case  at  the  hearinu'  ;  but  that  the 
order  of  tlie  Vice  Chancellor  was,  in  other  iesi)ects, 
ri<'ht.     lb',(L 

Jji?74.  Plaintiffs,  by  their  bill,  alle^jed  tluit 
goods  bearing  connterleit  trademarks,  similai-  to 
their  own  trademarks,  were  being  sold  in  laige 
qnantities  in  V.  and  elsewhere.  They  also  alleged 
that  the  defendants,  who  were  ship])ers  at  L.,  Iiiid 
shii)i)ed  large  qnantities  of  these  goods  to  \'.  Tliey 
Avrote  to  tlie  defendants,  asking  for  the  names  iii»d 
addresses  of  the  i)ersons  who  had  shipjjed  the 
goods.  On  receiving  no  answer  they  commenced 
an  action  for  discovery.  Ihdd,  overruling  the  de- 
mnrrer,  that  the  defendants  must  answer  inteirog- 
atories  within  one  month.  1870,  Vice  Ch.  IJaW s 
Ct.,  Orr  v.  Diaper,  40  L.  J.  {N.  JS.)  C/t.  41. 

See  also,  §  224. 


i 


tl 

n 


EMBLEM. 


See  Devices,  §§  200-209. 


EQUALITY. 


Equality  of  goods  upon  which  simulated  mark  is 
placed  not  a  good  defense.  See  Quality,  §  912, 
et  seq. 


m 

-J.M.: 


WTf" 


ijP 


EVIDKNCK. 


evidp:nce. 


§  280.  Where  tlie  declaration  iii  case,  for  t\m 
violation  of  a  trademark,  stated  tliatdeffMidaiits  sold 
^oods,  marked  with  the  same  name  as  tlie  plaiiitilTs, 
as  and  foi',ii:()odsmaniiraetiired  hy  the  plaiiitill'  :and 
it  appeared  in  evidence  that  the  persons  who  l)on,i;ht 
the  goods  of  tlie  delendanfs  knew  by  whom  they 
were  mannfactnred,  but  that  the  defendants  usetl 
the  plaintiff's  mark  and  sold  the  goods  so  marked 
in  order  that  his  custcmiers  might,  and  in  fact  they 
did,  re-sell  them  as  and  i'or  gootls  manufactuied  by 
the  plaintiff.  IMd,  that  this  evidence  supi)orted 
the  declaration.  18:24,  Of.  of  Kiaf/'s  Jknrli,  Sykes 
T.  Sykes,  8  Barn..  &  C.  541  ;  S.  U,  5  DowL  ct-  /j*/y/. 
292. 

ji  281.  In  an  action  on  the  casp  for  the  violation 
of  a  trademark  it  was  proved  that  the  plaintiff  had 
informed  the  defendants  that  he  considered  the 
mark  nsed  by  them  to  be  an  imitaticm  of  his  own, 
and  reqniied  them  to  desist  from  using  it.  The  de- 
fendants, in  their  reply,  denied  that  tluMr  mark 
either  was  or  was  intended  to  be  an  imitation  of 
the  plaintiff's,  and  thej'  ccmtinued  to  use  it.  Ild'h 
that  this  was  proper  evidence  for  the  jury  as  to  the 
intention  of  the  defendants  in  persisting  to  use  the 
mark,  but  that  it  made  no  difference  in  point  of 
law  in  their  right  to  use  it.  1842,  Ct.  of  Com.  Picas., 
Crawsliay  «.  Thompson,  4  M.  &  Y.  357;  S.  C,  11 
L.  J.  II.  C.  P.  301. 

§  282.  A  custom  in  Europe  to  violare  trademarks 
is  a  bad  one,  and  cannot  affect  the  law  as  it  exists 
in  the  United  States.  184G,  U.  ^.  Circiut  Ct.  Mass., 
Taylor  v.  Carpenter,  2  Woodh.  &  M.  1. 


Evii)i:n('K. 


bO 


§  283.  The  moinont  the  strai;4litr<n\vai(l  and 
simj)l(Miio{l(3  of  iiKlicatinii'ownci'sliii)  1)_\  lie  owner's 
name  is  ahandoiicd,  llic  burden  is  tliiowii  iiixtii  the 
complaiiuni;"  party  (d"  showiiiu'  that  llie  desiunatinu 
used  does  Ui)i  mean  somelldii.u"  iclatiii^-  lo  the 
quality  (»!'  the  article  oi-  soiue  other  atlrihutc. 
1800,  iV.  y.  >'>'t(pt'fwr  01.  U.  7\,  Coiwin  /•.  Daly,  7 
Bosw.  222. 

^  284.  In  an  action  for  an  account  and  payment 
of  prolits,  and  for  damages  on  the*  ^-round  that  the 
defendant  had  been  unlawfidlv  coi»\im;'  and  usin^• 
the  plainlilfs  tiadema^k  oi-  hdxd  on  botlU'd  poilei-, 
the  defendant,  on  b«;inii;  called  as  a  witJiess,  leTused 
to  answer  the  followin.ti,' (Questions.  u[)on  the  <iround 
that  his  answers  would  tend  to  cotivict  him  of  a 
criminal  oll'ense,  under  tin;  act  of  April  1,  1S,')0 
{Lawfi  of  N.  Y.  18.")(),  1137),  to  wit:  1.  Have  y(»ii 
witiiin  the  last  six  years,  used  labels  like  those  set 
forth  in  the  {;omplaint,  on  American  porter  bottled 
by  you  i  2.  W'eie  there,  on  any  of  the  bottles, 
labels  like  those  of  the  plaintilf,  as  set  I'orth  in  the 
complaint  ;:  '^.  Have  you  sold  i)oitei',  within  llu; 
last  six  years,  as  and  for  an  inntation  of  liyass 
Lon(h>n  Porter  i  4.  Did  you  at  any  time  diuinii,'  t la; 
three  years  ending  Ahiy  1,  18.-)7,  put  Ameiican 
porter  in  bottles  and  label  them  with  labels  like 
those  attached  to  the  comi)laint  in  this  action  i 
Ildd,  that  the  defendant  was  privileiivd  from 
answering  tlie  iirst,  second  and  fourth  questions, 
but  was  not  pi-ivileged  from  answering  the  third 
question.  IIclcl^  also,  that  the  same  ruh*  of  law 
winch  excuses  a  witness  from  answering  questions 
which  may  tend  to  convict  him  (;f  a  crime  or  rids- 
demeanor,  excuses  him  from  producing  books  or 
pajjfcrs  which  may  be  used  in  evidence  against  him 


mfm^m 


90 


Evidence. 


n 


tending;  to  the  same  result.     1800,  Ii\  Y.  S^Npreme 
(7.  >s'.  T.,  Byass  >\  Sullivan,  21  How.  P/\  r>(). 

i^  2bT).  Where  certain  correspondence  passed  be- 
tween the  i)arties  with  a  view  to  a  compromise 
anterior  to  the  iilin,i>"  of  the  bill,  by  whicli  terms 
were  offered  to  tlie  defendants,  which,  as  was 
alleged  tliem,  I'endered  the  suit  unnecessary.  ]l<i<l, 
that  in  the  absence  of  bad  faith  or  anythiiiii'  amount- 
ing to  ;i  release  or  binding  agreement  with  respect 
to  the  cf'ji.  o  of  action,  the  court  could  not  regard 
such  negotiations.  18(5:^,  Before  the  Lord  Ch.  on 
appeal,  Edelsten  /'.  Edelsten,  9  Jurist  (iY.  *V.)  470  ; 
S.  C,  1  JJe  a.  J.  &  K  18o  ;  S.  C,  11  Wec/d//  IL 
1328;  S.  (J.,  7  Law  Times  {N.  8.)  708 ;  S.  C,  1  ^\ 
It  30'J. 

^  28G.  AV^here  the  court  is  of  opinion  that  the 
nse  of  a  particular  mark  is  likely  to  deceive,  it'will 
not  require  evidence  of  actual  deception.  1801}, 
Vice  Ch.  Wood.,  Braliam  v.  Bustard,  9  L<no  Times 
{N.  H.)  190  ;  IS.  C,  1  Hem..  &  3L  427 ;  S.  C,  11  IT. 
Jl.  1001  ;  S.  (J.,  2  m'W  R.  d72. 

§  287.  In  trademark  suits,  in  order  to  found 
the  jurisdiction  of  the  court  of  chancery,  tlieie 
must  be  established,  first,  the  existence  of  the  trade- 
mark ;  next,  the  fact  of  an  imitation,  whether  a 
direct  iuiiration,  or  one  with  such  variations  that  the 
court  must  legard  them  as  merely  colorabl(^  ;  and 
thirdly,  the  fact  that  the  imitations  were  made  with- 
out license,  or  anything  that  the  court  could  re- 
gard as  aqiiiescence  in  their  use.  180;J,  Lord  Ch. 
Brad//,  Kinahan  r.  Bolton,  15  Irish  Ch.  75. 

§  288.  A  i)laintifT  by  his  bill  prayed  an  injunction 
to  restrain  the  defendant  from  falsely  representing 
that  the  latter  was  carrying  on  business  in  succes- 
sion to  or  in  connection  with  him  ;  the  bill  averred 


EVIDENCK, 


91 


general  acts  of  misrepresentation  ;  l)ut  one  case  only 
was  made  out  in  wliicli  the  defendant  liad  opened 
a  letter  addressed  to  tlie  plaintiff,  answered  it  in  liis 
own  name  and  endeavoi-ed  to  obtain  tin;  custom 
wliicli  tliat  letter  oifered  to  the  plaintilf.  11<I<L 
that  thon^'h  this  raised  a  grave  snspi(i(m  ngainst 
the  defendant,  it  was  not  sulhcient  in  a  suit  IVanied 
as  was  this  to  entitle  the  plaintilf  to  an  injunction, 
and  the  bill  was  therefore  dismissed  ;  bur.  owing  to 
the  suspicious  conduct  of  the  def<^nd;)Mt,  without 
costs.  18(54,  v.  ah.  Wood  a  (hurt,  Edginton  r.  Ed- 
ginton,  11  L%w  Tluma  R.  (.Y.  .V.)  l->->- 

)^  289.  Wiiere  there  is  evidence  showing  that  in 
point  of  fact  some  i)ersons  hav<'  b(;en  actually  mis- 
led, it  is  in  vain  for  witnesses  to  sav  that  in  their 
opinion  persons  could  not  be  misled.  And  it  is  not 
the  question  whetlier  the  public  generally,  or  tncn  a 
majority  of  the  public,  is  likely  to  l)e  misled  ;  but 
whether  the  unwary,  the  heedless,  the  incautious 
porti(m  of  the  public  would  be  likely  to  l)e  misle<l  ; 
and  I  think  it  may  be  safely  s;ud  that  that  is  not  a 
very  inconsiderable  i)ortion  of  the  pul)lic.  180."),  V. 
Ch.  Kinder  sic  I/,  Glenny  «.  Snuth,  ;2  Dr.  &  Sj//.  4.70  ; 
S.  C,  11  Jurht  (iT.  K)  004  ;  S.  C,  i:J  L.  T.  R.  {X. 
ii.)  11  ;  S.  C,  G  New  11.  808. 

§  290.  Where  the  imitation  of  the  plaintiff's  tiade- 
mark  is  close,  and  the  manner  in  which  the  defen- 
dant's article  is  put  up  neaily  lese  iibles  the  plain- 
tiff's article  and  mark,  the  law  must  piesumeit  t(j 
have  been  resorted  to  for  the  purpose  of  inducing 
the  public  to  believe  the  article  is  that  of  the  plain- 
titt"s  whose  trademark  is  imitated,  and  for  the  pur 
pose  of  supplanting  him  in  the  good  will  of  liis  busi- 
ness 1808,  N.  Y.  Com.  Plea.s,  <L  T.,  Curtis  (\ 
Bryan,  2  Daly,  312  ;  S.  C,  '60  How.  Pr.  8:1. 


T  ' 


mi: 


Wff^mm 


92 


EVIDE^X'E. 


§  291.  Wlio^never  a  trademark  is  employed  to  de- 
8i^ii;nate  :«  particular  luanufacture,  wiietliei- the  term 
used  is  a  i)()[»iilar  one,  formed  of  words  or  symlx^ls 
common  to  tlie  world,  or  one  expressly  created  for 
the  purpose  to  winch  it  is  applied,  and  I  he  manu- 
factJire  accpiires  reputation  and  becomes  valuable  as 
an  article  of  merchandise,  an  imitator  thereof  for 
a  kindred  or  similar  manufar^ture,  is  presuuKnl  to 
intend  wrongfully,  and  tiie  burden  rests  upon  him 
to  show  that  thei'e  is  either  no  pi'operty  in  tiie  tei'm 
or  symbol,  arising  i'l-oni  i)riority  of  use  for  the  ai-ti- 
cle  to  which  it  has  })een  a])plied,  oi'  ihat  the  claim 
of  priority  is  unfounded,  or  that  no  deceit  or  injury 
can  result  from  the  imitation.  1808,  jV.  )'.  ('/.  Com-. 
Pleas,  /S',  7'.,  jMesserole  v.  Tynbeigh,  4  Ab//.  Pr. 
{N.  .V.)  410 ;  S.  C,  mi[ow.  Pr.  14. 

§  292.  Most  of  the  defendants  corporators  were 
officers,  stockholders  and  employes  of  the  i)laintiff 
corporation.  One  after  another  resigned  his  office 
or  jiosition,  and  sold  out  his  stock,  and  secretly  or- 
ganized and  put  in  operation  a  rival  comi)an3  5  which 
bought  the  entire  jiroperty  of  a  similar  coi'[)ora^ion 
in  a  neighboring  town,  and  located  themselves  per- 
manently in  tlie  same  town  with  the  petitionee's,  es- 
tablished their  depots  for  the  sale  of  theii'  goods  in 
New  York  and  Boston,  as  near  as  practicable  to  the 
depots  of  the  petitioners,  and  assumed  a  name  so 
neaj'ly  like  that  of  the  petitioners  as  to  induce  the 
belief  that  the  two  ccmipanies  were  the  same.  Held, 
that  from  these  facts  the  intention  of  I  lie  defen- 
dants to  beneiit  themselves  at  the  expense  of  injur- 
ing the  petitioners  nuiy  be  legitimately  iaf erred. 
1870,  tSupreine  CL  of  Errovfi  of  Voitii.,  Holmes  v. 
Holmes,  Booth  &  Atwood  Manuf.  Co.,  37  (Joan. 
278. 


EviDEXCE. 


93 


§  293.  Wliere  ii  pei-.son  seeks  to  esfnhlisli  a 
trademark,  tlie  i)ro(»r  must  be  clein-,  leavin.i!;  I  he 
q[uesti()n  l)ey()n(l  a  reasonable  doubt.  J87(>,  S//- 
preme  CL  of  lUuioU^  Candee  t.  Dei^re,  H-t  ///.  439. 

§  294.  Wliere  the  plaintiffs  luid  been  in  tlie  ex- 
clusive use  of  a  trademark  since  18."J8,  it  Avas  held 
that  they  were  not  oldiged  to  show,  ns  a<j,;)inst 
wrong-doers,  that  they  liad  a  written  assignment 
from  one  of  their  foimer  partiK'rs.  1871,  U.  S'. 
ClrcuU  Ct.  jVcbraska,  Ilostetter  v.  Yowinkle,  1 
Bill.  329. 

§  29.").  The  certiliente  of  the  registration  of  a 
trademark,  issued  to  the  plaintiff  fiom  the  United 
States  pat(mt  office,  nnder  the  act  of  Congi'ess  of 
July  8,  1870,  is  not  conclusive  evid<Mice  that  the 
nmrk  or  device  claimed  as  a  trademaik  is,  or  can 
become  a  lawful  trademark,  or  that  the  claimant 
was  the  ffrst  to  appiopriate  and  nse  it.  1871,  U. 
S.  Circuit  Ct.  Cat..,  Moorman  v.  Hoge,  2  S(ft/\//rr,  78. 

§  290.  There  is  nothing  much  more  ditlic^dt 
tlian  to  decide  npcm  the  kind  of  evidence  which  is 
];)i'oper  in  ti'ademaik  cases,  '^riie  best  evidence,  of 
course,  would  be  instances  of  actual  deception. 
But  if  none  such  can  be  furnished,  the  opinions  of 
witnesses,  formed  from  a  mere  inspec;tion  of  the 
genuine  and  the  imitation,  are  of  little  weight. 
Thej^  may  or  may  not  be  deceived,  bnt  they  are 
wholly  nnable  to  do  more  than  express  an  opinion 
as  to  the  effect  in  the  community,  the  force  or  cor- 
rectness of  which  is  not  increased  or  stiengthened 
by  the  peculiar  business  in  which  they  are  (Migaged. 
An  expert  can  easily  detect  a  counterfeit  bank  bill, 
but  his  oi)ini(m  as  to  whether  the  pubHc  could  de- 
tect it,  is  not  entitled  to  any  more  weight  than  the 
opinion  of  any  other  person.     1872,  N.  Y.  ISuperior 


\ .     ' 


II 


-  e 


Pf!^V«P 


94 


Exclusive  Right. 


Ct.  .Special  T.,  Cook  ?).  Starkweather,  13  Ahh.  Pr. 
{N.  K)  392. 

^  21)7.  Evidence  of  skilled  witnesses,  tlisit  in 
tlieir  opinion  the  public  is  likely  to  he  deceived  by 
the  siinihu'ity  of  two  trademiirks.  is  not  of  itself 
sufficient  evidence  of  infringement.  1874,  Vice  (Jli. 
IMVs  CL,  Cope  /n  Evans,  L.  R.  18  /vy.  138  ;  S.  C, 
30  L.  T.  It.  (zY.  .S'.)  292  ;  S.  C,  22  W.  R.  4.')3. 

See  also  §§  432,  435,  447,  453,  450,  406,  47J,  476, 
482,  792. 


EXCLUSIVE    RIGHT. 

§  300.  The  right  which  any  person  may  liave  to 
the  protection  of  a  court  of  equity,  does  not  depend 
upon  any  exclusive  right  which  he  may  be  sui>posed 
to  have  to  a  particular  ntime  or  form  of  words. 
His  right  is  to  be  protected  against  fraud,  and 
fraud  maybe  practiced  by  means  of  a  name,  though 
the  party  practicing  it  may  liave  a  perfect  right  to 
use  that  name,  i>i'f>vided  he  does  not  acccmipany  its 
use  witli  such  other  circumstances  as  to  effect  a 
fraud  upon  others.  1843,  Rolls  Ci.,  Croft  v.  Day, 
7  Bi(n\  84. 

§  301.  The  inventor  of  a  medicine  has  no  exclu- 
sive right  of  property  in  it.  Any  otlier  individual 
has  a  right  to  make  and  sell  the  snme  medicine. 
An  exclusive  right,  as  the  inventor,  can  only  be  ob- 
tained under  tlie  patent  law  by  a  compliance  with 
its  provisions.  1849,  U.  K  Circnlt  Ct.  Lid..,  Cof- 
I'een  v.  13runt(m,  4  McLean.,  516. 

j5  302.  The  privilege  of  a  party  to  the  exclusive 
enjoyment  of  a  trademark,  does  not  rest  upon  the 
ground  that  the  plaintiff  has  a  right  of  property  in 


ExcLUsivi:  Right, 


95 


the  trademark,  but  the  relief  of  a  court  of  equity  is 
given  because  the  mark  is  a  sii;-u  or  repr<'s(Mitatiou, 
importing  and  so  understood  and  acted  upon  l)y 
the  public,  that  the  aitick;  to  wJiicli  ir  is  attached 
is  tile  manufacture  or  production  wliicli  isgencially 
known  in  market  under  tliat  denominati'm.  I8.")(5, 
AValton  ik  Crowley,  3  Bl.  Cirrtiit  (U.  JL  440  (  l\  X. 
Circuit  CL,  N.  if). 

i^  1301].  The  owner  of  goods,  which  he  offers  feu- 
sale  in  his  own  right,  is  entitled  to  pi-ocecd  in  his 
own  name  for  thi^  protection  of  any  tra<hMnark  de- 
vised and  applied  by  him  to  tlie  goods,  to  dis- 
tinguisli  th(^m  as  being  of  a  particular  manuf:icture, 
although  he  is  not  himself  the  manufacturer,  and 
although  he  uses  tlie  name  of  the  real  manufae- 
turer  as  part  of  the  trademark.     IJ>id. 

§  804.  Althougli  there  is  no  excbisive  ownership 
of  the  symbols  which  constitute  a  trademark  apart 
from  the  use  or  ai)plication  of  them,  yet  the  exclu- 
sive right  to  use  such  mark  in  crmnection  with  a 
vendible  commodity  is  rightly  called  ju'operty, 
and  the  jurisdiction  of  the  court  to  restrain  the  in- 
fi'ingement  of  a  trademark  is  founded  ui)on  the  in- 
vasion of  such  property,  and  not  upon  the  fraud 
committed  upon  tlie  pul)lic.  The  same  things  are 
necessary  to  conftititute  a  title  to  relief  in  equity  in 
the  case  of  the  infringement  of  the  right  to  a  ti-ade- 
mark,  as  in  the  case  of  the  violation  of  any  other 
right  of  projierty.  First,  the  plaintiff  must  prove 
that  he  has  an  exclusive  right  to  use  some  particu- 
hir  mark  or  symbol  in  connection  with  some  manu- 
facture or  vendible  commodity  ;  and  secondly',  that 
this  mark  or  symbol  has  been  adopted,  or  is  used 
by  the  defendant  so  as  to  prejudice  the  ijhiintiffs 
custom,  and  injure  him  in  his  trade  or  business. 


i 
M 


i3 


"w|rr"P"P 


96 


ExcLUimvE  Right. 


18Gr{,  Lord  Chancollor  \V;;^rrujiiY,  The  Lentlier 
Clotli  Compnny  (liniitod)  v.  j  u  '  Aincriwin  Lcnthei" 
Cloth  Company  (liniihxl),  'VA  Lk/o  J.  JL  {X.  K) 
Vk.  101);  S.  d.,  12  W.  R.  281);  S.  C,  10  Jurisf 
{N.  ^'.)  81  ;  S.  C,  9  /_..  T.  R.  {X.  .S'.)  o.xS. 

i:^  IJO.").  It  is  true  tliat  in  some  cases  are  found 
dicta  l)y  eminent  jiidu'es,  tliat  tliero  is  no  ])n)])er(y 
in  a  ti'adeniavk,  wliicli  must  be  understood  to  uiean 
Miat  there  can  be  no  right  to  the  exclusive  owner- 
>(!'!)  of  any  symbols  or  niarlvs  universally  in  the  ab- 
stract ;  thus  an  iron  founder,  who  uses  a  particular 
mark  for  his  manufacture  in  iron,  could  not  restrain 
tlie  us*^  ■  f  the  same  mark  wlien  impressed  upon 
coitoji  or  Avo''len  goods;  for  a  ti'ademark  consists 
in  the  exchisive  right  to  the  use  of  some  name  or 
symbol  as  applied  to  a  particular  nianul'actui-e.  and 
such  exclusive  right  is  jiroperty.  Nor  is  it  correct 
to  say,  that  tht;  right  to  relief  is  founded  on  the 
fraud  of  the  defendant,  for,  as  appears  by  Milling- 
ton  I).  Fox,  tire  plaintilt'  is  entitled  to  relief  even  if 
tlie  defendant  can  prove  that  lie  acted  innocently, 
and  without  any  knowled,M;e  of  the  rights  of  the 
plaintilf.  Imposition  on  the  public  is  indeed  neces- 
sary for  the  plaintiffs  title,  but  in  this  way  only, 
that  it  is  the  test  of  the  invasion  l)y  the  defendant 
of  the  plaintiirs  right  of  property  ;  for  there  is  no 
injury,  if  the  mark  used  by  the  defendant  is  not 
such  as  may  be  mistaken,  or  is  likely  to  be  mis- 
taken, by  the  public  for  the  mark  of  the  i)]aintiff. 
But  the  true  ground  of  the  jurisdiction  of  the  court 
of  chancery,  is  property,  and  the  necessity  iov  in- 
terfering to  xu'otect  it  by  reason  of  the  inadequacy 
of  the  legal  remedy.  180J3,  Lord  Chancellor  Wkst- 
iJUiiY,  Hall  0.  Barrows,  12  Weekly  R.  322  ;  S.  C,  9 


ExcLisivi:  Right. 


97 


Law  Tim  ('ft  X.  f!.  r>C>\  :  S.  C,  ^3  Law  Jour.  (i\" 
S.)  Ch.  i.n)4  ;  S.  v..  K)  ./////.sV  X  .s'.  55. 

j5  IjOt).  The  court  of  cliaiK'ory  lias  taken  upon 
ifsoli'  to  pi-otcM't  a  man  in  tli(^  uso  of  u  cerLain  ti-adc- 
mark  as  applied  to  a  ])ai'ti(Milar  desciiption  of 
aiti('l(\  lie  has  no  property  in  that  niarlv  /n  r  .sv, 
any  more  than  in  anv  other  fancifrd  denomination 
lie  may  assnme  for  his  own  ])]ivate  use.  otherwise 
than  with  nd'erence  to  his  tra;h>.  If  he  does  not 
carry  on  a  trade  in  iron,  but  carries  on  a  trade  in 
linen,  and  stam])s  a  lion  on  his  linen,  anollier  i)er- 
son  may  stamp  a  lion  on  iron  ;  Imt  when  he  has 
appropriated  n  maik  to  a  jiarticular  spe<'ies  of 
goods,  and  caused  his  goods  to  cii'cnlate  with  this 
mark  upon  them,  the  court  has  said  tliat  no  one 
shall  be  at  liberty  to  d(d'raud  that  man  by  nsing 
that  mark  and  passing  olf  goods  of  his  manufacture 
as  being  the  goods  of  the  owner  of  that  niaik. 
18G0,  \.  C.  Wood,  in  Alnsworth  v,  Walmsley,  Laio 
li.  1  AV/.  olS;  S.  C,  ]-i  Jvriftf  {N.  .s'.)20.")';  S.  C, 
14  WccM;/  R.  :}(j:1;  S.  C,  14  Law  Tiinr.s  {N.  X) 
220;  S.  C.,  ?>:)  Law  Jour.  {X.  S\)  Chanc.  I^ri. 

>5'  o(>7.  A  trademark  to  wduch  a  trader  had 
originally  an  exclusive  right,  may  in  course  of 
time  become  puhlic/' Juri.s\  and  the  exclusive  right 
may  be  lost.  The  proper  test  of  this  having  hap- 
pened is,  that  the  use  of  the  trademark  by  other 
persons  has  ceased  to  deceive  the  public  as  to  the 
maker  of  tlu^  article.  1872,  C/i.  CI.  of  Apj)('al, 
Ford  V.  Foster,  Law  B.,  7  C/taucery  App.  Cas. 
Gil  ;  S.  C,  27  L.  T.  R.  {^N.  S.)  219  ;  s".  C,  41  Law 
Jour.  {N.  S.)  C/i.  GS2;  S.  C,  20  WeeAh/  R.  318; 
reversing  S.  C,  20  W..  R.  811. 

§  308.  Jf  ."^ecvis,  that  it  is  not  necessary  that  the 
claimant  of  a  trademark,  in  an  action  for  its  ini'ringe- 
7 


5?  a 

m 


iir-T" 


9d 


Exclusive  Right. 


ment,  should  show  an  exclusive  right  to  it.  The 
right  must  be  exclusive  as  against  the  defendant. 
The  principle  upon  which  relief  is  granted  is  that 
the  defendant  shall  not  be  permitted,  by  tlie  adop- 
tion of  a  trademark  which  is  untrue  and  deceptive, 
to  sell  his  own  goods  as  those  of  the  plaintilf,  thus 
injuring  the  latter  and  defrauding  the  public.  1872, 
jY.  Y.  Commission  of  Appeals^  Newman  «.  Alvord, 
51  N.  Y.  189  ;  affirming  S.  C,  49  Barb.  588 ;  S.  C, 
35  IloiG.  Pr.  108. 

§  809.  The  rule  that  descriptive  terms  cannot: 
be  exclusively  appropriated,  has  its  exceptions, 
where  the  intention  in  the  adoption  of  the  descrip- 
tive word  is  not  so  much  to  indicate  the  place  of 
manufacture  as  to  intrench  upon  the  previous  use 
and  popularity  of  another's  trademark.  1873,  xY. 
r.  Supreme  Ct.  G.  T.,  Lea  ?).  Wolf,  15  Ahh.  Pr. 
{N.  S.)  1;  S.  C,  1  Thompson  and  C.  020;  S. 
C,  40  How.  Pr.  157;  modifying  S.  C,  13  Abb. 
Pr.  {N.S.)  389. 

§  310.  The  interference  of  courts  of  equity,  in- 
stead of  being  founded  upon  the  theory  of  protec- 
tion to  the  owners  of  trademarks,  is  now  supported 
mainly  to  prevent  frauds  upon  the  public.  If  the 
use  of  any  words,  numerals,  or  symbols,  is  adopted 
for  the  purpose  of  defrauding  the  public,  the  courts 
will  interfere  to  protect  the  public  from  such  fraud- 
ulent intent,  even  though  the  person  asking  the  in- 
tervention of  the  court  may  not  have  the  exclusive 
right  to  the  use  of  those  words,  numerals,  or  sym- 
bols. This  doctrine  is  fully  supported  by  the 
latest  English  cases  of  Lee  v.  Haley,  5.  Ch.  Ajyp. 
Cas.  Law  11.  155,  and  Wotherspoon  w.  Currie,  in 
the  House  of  Lords,  5  Eng.  &  It.  App.  Laio  R.  508, 
and  also  in  the  case  of  Newman  v.  Alvord,  51  N. 


EXIXUTOUS— -FOKKI<;XKUS. 


99 


Y.  189.  1877,  m  r.  Sajyveine  Ct.,  S.  T,,  Van 
BiiUNT,  J.,  Kinney  v.  Basch,  unreported. 

And  see  §§  326,  345,  58G,  590,  657,  670,  726,  783. 

For  cases  concerning  the  exclusive  right  to  the 
use  of  descriptive,  geographical  and  firm  names,  see 
those  titles. 

See  also,  Original  Ownership,  and  Words. 


EXECUTORS. 

See  Administrators. 


FALSEHOOD. 
See  Misrepresentation,  §§  530-579. 


(i3 


FANCY  NAME. 
See  Name  (Fancy  Name),  §  680. 


FIGURES. 
See  Numerals,  §§  740-749. 


FIRM  NAME. 
See  Partnership,  §§  780-819. 


FOREIGNERS. 

See  Aliens,  §§  110-116. 


'»■'  T^'^ 


100 


Foreign  Words. 


FOREIGN  WORDS. 

^;3in.  Where  the  plaintiit  lind  been  aociistmned 
to  iiiaunf.'U'lnro  watches  for  tlie  Turkisli  market,  in 
which  coiinlry  they  liad  acquired  great  repute  and 
were  known  by  the  marks  engraved  upon  tlieinsid(> 
thereof,  to  wif  :  in  Turkisli  cliaracters  the  plain- 
tiirs.name  and  the  word  "Pessendede,"  which  sig- 
nirK^l  "  Wan-anted"  or  "Approved"  ;  and  tlie(U'- 
l'en(hint  got  Messrs.  Parkins(m  to  mannl'acture 
waiclies  i'or  him  on  wliich  tliere  were  engraved,  in 
Turlvish  characters,  tlie  words  "Ralph  Gout"  and 
"Pessendede"  on  the  same  part  of  the  watch  as 
the  plaintiif  and  wliicli  the  defendant  consigned  to 
Constantinoi)le,  IMO^  that  defendant  Aleploghe 
should  be  restrained  by  injunction  fnmi  sending  or 
l)ermitting  to  go  to  Turkey  or  any  other  place,  and 
from  selling  and  disposing  of  any  watches  witli  the 
name  of  thei;)laintilf  thereon  in  Turkish  charax'ters, 
or  the  word  "Pessendede"  thereon  in  Tirkish 
cliaracters,  or  any  watches  inimitaticm  of  theplain- 
titrs  watches,  and  also  that  Ale[)loghe  and  Messrs. 
Parkinson  should  be  enjoined  fi'{mi  manufactui'ing 
or  vending  sncli  watches.  1833,  Ylm  Ch.  Ct.^  Gout 
?).  Aleploghe,  C  Beai^.  G9  ;  S.  C,  CliiUiJ sGeiCl  Pr. 
72. 

§  \\\Q.  An  injunction  lies  to  jnotect  the  prior 
right  of  one  who  has  tirst  adopted  in  the  United 
States  a  word  from  a  foreign  language  to  designate 
an  article  of  his  mannfa(5tui'e,  although  a  similar 
artit^le  was  X)i'eviously  produc(Hl  and  known  under 
such  designation  in  the  foreign  country.  1870,  N. 
Y.  Supreme  CL,  -6\  7\,  Rillet  v.  Carlier,  11  Abb. 
Ft.  {lir.  S.)  18G ;  S.  C,  61  Barb  4?5. 


FOUKKJN    WollD?. 


101 


§  317.  The  ]»l;uiifin'  made  ;i  synip  from  poiiic- 
grunates,  uliich  lie  soltl  uiidm'  the  ii:iiii<^  of  "(I'lc'i- 
ade  Syrup."  The  del'eiKhuif  .soii^'lit  to  justiry  his 
siibsvHpieiitly  a(h)i)fiiig  tht*  same  name  for  a  lival 
ai'Hcie,  by  allei^'ing  that  the  word  '•(Ireiiadc,"'  fiom 
the  Fiviich  ]an<;-uage.  siuiiifyiiiij;-  '*  P()mei>'i'aiiat(>," 
wa.s  used  in  France,  at  and  bet'ore  its  ad<)])tion  ))y 
[»!aIntilT  here,  as  the  name  of  a  similar  syrup  sokl 
there.  Held,  that  notwiiiistandin^  these  facts,  the 
plaintilf  was  entitled  to  an  injnnction.     Ibid. 

t  -Jl^.  The  plaintiffs  manufactuied  and  sold  to 
foreit^n  merchants,  for  ex[)ort  in  the  east,  pieces  of 
S[)finish  shirtin,a,s,  ini[)ressed  with  a  trademark  con- 
sisting- of  a  ligure  of  a  lion  enclosed  in  an  orna- 
mental l)order,  and  the  words  "Spanish  Shirtin,i;s,'' 
inclosed  in  a  scroll,  with  the  iig-ures  No.  120,  to 
which  wei'e  added  the  words,  "exactly  twelve 
yards,"  in  Turkish,  Armenian,  and  lloman,  placed 
one  over  the  other.  The  bill  alleged  that  the  de- 
fendants were  preparing  Spanish  shirtings  for  ex- 
portation, with  marks  almost  identical  with  the 
plaintiffs'  impressed  upon  them,  except  that  an 
elephant  was  substitnted  for  a  lion,  and  live  lions 
for  four.  ITvJd,  that  though  an  elephant  vais  used 
by  the  defendants,  the  three  sentences  in  the  same 
order  was  an  infringement  of  the  i)laintiffs'  rights, 
and  an  injunction  should,  therefore,  be  granted  to 
restrain  the  use  of  the  words  in  the  three  languages, 
in  tile  order  used  by  the  iDlaintiffs.  Vice  Ch. 
Wickkn's  Ct.,  Broadhurst  li.  Barlow,  Weekly 
Notea  1872,  p.  212. 


Hi 


'*fvr  "^ 


102  Fraud — GEOoRAriiiCAL  Name. 

FRAUD. 

Fraud  by  the  owner  of  a  trademark. 

See  Misuepuesp:ntation,  §§  530-579. 

Fraud  by  one  who  infringes  upon  another's  right 
to  a  trademark. 

See  Intent,  §§  44.'5-489 ;  Exclusive  Right, 
§§  301-314. 


GENERAL  ASSIGNMENT. 
See  §§  121,  135,  142. 


GENERIC  TERM. 

See  Descriptive  Name,  §  640,  et  seq. ;  Words, 

§  1010,  et  seq. 


GEOGRAPHICAL  NAME. 


See  Name,  §  705,  et  seq. 


IIOTKI.S—  I  MITATIOX. 


103 


HOTELS,    Namk  of. 
See  BuiLDrxTis,  §  100,  et  seq. 


IMITATION. 

§  325.  The  plaintiifs  and  the  defendant  wore  nian- 
iil'aetarers  of  blackin,!^,  and  the  hitter  sohl  liis  hhirk- 
inii;  in  bottles,  wliich  not  only  re.send)led  the  bottles 
nsed  by  the  phiintiJfs,  but  were  labeled  in  a  similar 
manner;  the  onlv  difference  between  the  two  labels 
was,  that  the  hd)els  of  tlie  plaintiffs  described  their 
blackiiii;  as  "manufactured  by  Day  and  Martin," 
wliilst  tliat  of  the  defendant  described  his  blacking 
as  "equal  to  Bay  and  Martin's."  The  words, 
"equal  to,"  were  ju-inted  in  a  very  small  type.  An 
injunction  was  granted  ex  parte  to  restrain  the  de- 
fendant from  using  his  said  labels  or  anv  labels  in 
imitation  of  those  of  the  plaintiifs.  1831,  Before 
the  Alee  Ch.,  Day  «.  Binning,  1  C.  P.  (Jooj)er^  489. 

§  320.  The  plaintiffs  were  prox)rietors  of  the 
London  Conveyance  Company,  which  ran  omni- 
buses between  Paddingtt)n  and  the  Bank.  The 
defendant  began  to  run  between  the  same  places  an 
omnibus  on  which  were  the  words  "Conveyance 
Company"  and  " London  CVmveyance  Company," 
in  such  characters  and  parts  of  the  omnibus  as 
exactly  to  resemble  the  same  words  on  the  omni- 
buses of  the  plaintiffs  ;  a  star  and  garter  were  in 
like  manner  simulated,  and  the  green  livery  and 
gold  hat  b.:7ids  by  which  plaintiffs  distinguished 
the  coachmen  of  their  omnibuses  were  also  imitated 


!;|i 


1^» 


104 


Imitatiox. 


by  Ihc  defendant.  Tlie  plaintiffs  served  a  nv)li('e  (sii 
the  dereiidant,  intimating  that  an  injiinerioii  would 
1)1'  lipiilied  for,  and  after  such  notice  the  defcMuhiut 
o!)liie;a(ed  irom  the  back  of  liis  omnibus  the  word 
"  ''ompany,"  and  painted  on  each  side  of  liis  omni- 
bus, over  the  words  "Conveyance  Company,"  the 
woi'd  "Original,"  and  between  the  words  "Con- 
veyance" and  "CVmipany"  the  word  "for"  in 
very  small  and  almost  invisible  characters.  The 
Master  of  the  llolls  held  that  the  defendant  intended 
to  induce  tlie  j^ublic  to  believe  that  his  omnibuses 
were  those  of  the  i)]aintiffs.  That  it  was  not  to  be 
said  that  the  i)laintiirs  had  any  exclusive  right  to 
the  woi'ds  "Ccmveyance  Company,"  or  "London 
Ccmveyance  Company,"  or  any  other  words  ;  but 
that  plaintiffs  had  a  right  to  call  np<m  the  court  to 
lestraiu  the  defendant  from  fraudulently  using  pi'e- 
ci.se]  v  the  same  words  and  devices  which  thev  had 
taken  for  tlu^  x>'iJ'P<^^''  ^>f  distinguishing  their  pro- 
I)tM'ty.  and  thereby  depriving  them  of  their  prolits 
of  their  business  bv  attracting  custom  on  the  false 
representation  that  carriages,  really  the  (h^fendant's, 
bc^longed  to  the  plaintiffs.  The  defendant  was  en- 
joined from  using  on  his  omnibus  the  words  "Lon- 
don ( 'onveyance,"  or  "Original  Conveyance  lor 
Ccnnpany,"  or  any  other  names  jiainted  tliereon,  in 
such  manner  as  to  be  a  colorable  imitation  of  the 
vvoi'ds,  devices,  &c.  on  i)laintiff's  omnibuses.  JS;)(), 
lions  CI.,  Knott  «.  Morgan,  2  Keen,  21:5. 

§  ;'.27.  The  plaintiff,  and  his  father  befoi-e  him, 
had  been  for  some  years  past  in  the  habit  of  mark- 
ing the  bai"s  of  iron  manufactured  by  them,  witli 

their  initial  letters,  i)laced  in  an  oval,  thus  :  (^^ 

The  plaintiff's  iron  so  marked  was  in  great  estima- 


.,'  '' 


tin 


IlMITATIOX. 


105 


tion  in  the  Turkish  luarket,  whei'e  the  ni:iik  in 
question  was  UMMierally  known  as  "the  coml)  niaik."' 
In  t\w,  vear  IS;]?,  the  defendants  reeeived  iVoni  a 
Turkish  merchant  in  Lonch)n,  nn  ordei"  foi'  a  •]uau- 
tity  of  iron  to  be  stami)ed  AV,  with  a  little  O  in  an 

oval,  thus:    OV^  and  to  be  ship])ed  by  a  certain 

vessel.      The  order  was  executed,   but  the  stamp 

was  made  W,  with  a  dot  in  an  oval,  thus :    OVj 

The  defendants,  in  execution  of  other  (nclns, 
and  for  the  Turkish  market,  continued  to 
supply  iron  stamped  witli  the  foregoing-  letters, 
wdiich  were  afterwards  varied,  accordintc  to  or- 
ders, to  W,  with  a  larg'e  O  in  an  oval,  thus  :  ^vm 

The  plaintill',  in  18:>7  and  18:50,  remonstrated  with, 
and  com])hiined  to  the  defendants,  but  they  did  not 
discontinue  the  use  of  the  stamp,  but  used  it  only 
in  the  execution  of  foreign  ordei-s.  Othei' nuiuu- 
facturers  had  used  somewhat  similar  mai'ks,  Imvini!: 
been  ordered  to  do  so  for  the  Turkish  uiaik(^t. 
There  was  no  evidence  to  show  that  any  person  litul 
been  actually  deceived  by  the  mark  used  by  tlu^  de- 
fendants ;  but  (jne  witness  stated  that  possibly,  in 
Asia  Minor,  it  might  be  taken  for  the  jtlaintilV's 
mark.  The  jurj^  found  for  the  defendants.  184l\ 
CL  Com.  Fleas,  Cniwshay  v.  Thompson,  4  M.  and 
G.  Jio7;  S.  C,  II  LaiD  Jour.  {C.  P.)  '301. 

§  328.  The  plaintiff  sold  a  medicine  in  boitles 
containing  not  more  than  tliree-qnai'ters  of  a  pound, 
covered  with  wrappers  headed  "Franks'  Sped  lie 
Solution  of  Copaiba,"  which,  after  eulogizing  the 
medicine  at  some  length,  ccmtained  "general  direc- 
tions for  its  use,"  and  concluded  with  cojjies  of  the 


■% 


'■■j^ 


1:1 


' 

'    %■'■ 

,,■'■■  V-'-' 

Wr 


•mw^ 


106 


Imitation. 


several  "testimonials"  of  the  most  eminent  sur- 
geons. The  defendant  sold  a  similar  medicine,  in 
bulk,  rhat  is,  by  the  pound,  covered  with  a  plain 
pai:)ei',  and  at  a  price  less  by  two-thirds,  than  the 
medicine  of  the  plaintiff.  The  defendant  used  a 
label  headed  "Chemical  Solution  of  Copaiba,"  and 
after  referinc^  to  the  curative  powers  of  the  balsam 
of  cox^aiba,  it  stated  that  its  nauseous  pi-operties 
had  been  removed  by  Mr.  Franks,  to  whom  was 
due  the  merit  of  originally  i'ntroducinu',  under  the 
apijellation  of  "  Speciiic  Solution  of  Copaiba,"  a 
preparation  of  the  balsam,  which  was  perfectly 
miscible  with  water,  &c.  It  then  went  on  to  state 
tiu;  merits  of  "The  Chemical  Solution,"  and  pro- 
ceeded as  f (allows  :  "  Mr.  Frank's  Speciiic  Solution 
of  Copaiba  was  extensively  adopted  and  employed 
by  the  following  members  of  the  profession,"  wliose 
testimonials  are  subjoined,  "Sir  Benjamin  Brodie, 
F.  R.  S.,"  (and  other  names).  The  directions  for 
use  then  followed,  which  were  similar  to  those  used 
by  the  plaintiff.  Four  of  the  testimonials  given  by 
said  gentlemen  to  the  plaintiff,  and  included  in  his 
wra})per,  were  subjoined  in  totldem  verbis^  testify- 
ing to  the  merits  of  Mr.  Franks'  preijeration,  lldO., 
that  although  the  defendant  had  used  the  plaintiff" s 
name  and  certiiicates  in  sach  an  ingenious  manner 
as,  [yrima  facie ^  though  not  in  fact,  to  appropri:ito 
and  ai)ply  them  to  his  own  medicines,  and  notwith- 
standing the  differences  in  the  mode  of  selling,  the 
proceeding  was  wrongful,  and  calculnted  to  deceive, 
and  the  defendant  was  restrained  by  injunction. 
1847,  llolh  CL,  Franks  v.  Wejiver,  \()  Biuio.  297. 

iJ  1329.     Complainant's  matches  were   put  up  in 
small  jxiper  box^s,  usually  of  brown  paper,  made 


Imitation. 


107 


with  a  cap  or  cover,  whicli,  when  placed  on  tlie  box, 
covered  about  a  third  of  its  lengtli ;  and  his  tiade- 
mnrks  were  a  cut  represenlin*^  a  straw  bee  hive, 
surrounded  by  llowers  arul  foliag-ii,  with  tlie  woids 
"A.  Golsh's  Friction  Matches,"  above  the  liive. 
Both  the  cuts  and  the  words  were  printed  on  a  hibel, 
wliicli  was  pasted  on  tlie  front  of  each  box.  Un<ler 
the  bee  hive  was  inserted  on  the  label,  usually  in 
two  panels,  the  street  and  number  of  the  manufac- 
tory, and  between  what  streets  it  was  situated,  and 
the  place,  '■^JVeio  lor/t,"  under  all.  The  defend- 
ants used  two  labels  upon  the  brown  paper  boxes 
in  which  they  put  up  their  matches.  One  contained 
the  device  of  the  bee  hive  and  the  foliage,  over 
which  were  printed  the  words,  "Menck&  iiackes' 
Friction  Matches,  late  chemist  to  A.  Golsh  ;"  the 
words  "late  chemist,"  being  in  caps  smaller  than 
the  rest,  and  under  the  bee  hive  were  printed  in 
two  panels  the  number  and  street  in  which  their 
manufactories  were  situated,  and  under  all  the 
i:)lace,  "New  York."  The  other  label  contained  a 
better  executed  bee  hive,  with  Howers  and  foliage, 
the  same  printed  words  under  it,  similarly  arranged, 
and  over  it  the  words  "Menck  &  Backes'  Fric- 
tion Matches,  made  by  J.  Backes,  late  chemist  for 
A.  Golsh,"  the  words  "A.  Golsh"  being  much 
larger  and  more  prominent  than  those  above  them. 
The  words  and  figures  on  the  Golsh  label  were  in 
black  letters  on  a  white  ground,  while  those  on  the 
defendant's  label  were  in  white  letters  upon  a  black 
ground.  When  the  cover  was  on  the  comi)lainant's 
box,  the  whole  printed  part  of  the  label  was  dis- 
tinctly visible.  When  the  cover  was  on  the  de- 
fendant's box,  the  only  printed  words  visible  above 


'I 


t,r>A 


-'  h 

.  h  u 

St:;! 


jtm    |iipp 


108 


Imitation. 


t\iii  bee  liive,  were  "Late  Chemist  for  A.  Golsh." 
JMd,  tliat  the  dilFerence  in  appearance  between 
tliese  two  lal)el.s,  was  so  great,  even  wliile  tlie  covers 
remained  upon  the  boxes,  that  it  was  liardly  possible 
to  suppose  a  j)erson  wlio  had  been  in  the  habit  of 
buying  and  nsing  boxes  of  matches  with  tlie  Golsh 
label,  would  suppose  those  with  the  defendant's 
laltel  were  the  same  article,  from  the  reseml)lance 
between  tlie  two  articles.  1848,  JV.  Y.  CL  of  Ap- 
peals, Partridge  v.  Menck,  1  How.  App.  Cas.  548 ; 
alfirming  S.  C,  2  ^aiulf.  Ck.  022,  and  S.  C,  2 
Barb.  Ch.  101. 

§  340.  Although  the  court  will  hold  any  imita- 
tion colorable  which  I'equii'es  a  careful  inspection  to 
distinguish  its  marks  and  appearance  from  those  of 
the  manuracture  imitated,  it  is  certainly  not  bonnd 
to  interfere  when  ordinary  attention  will  enable  a 
purchaser  to  discriminate.  It  does  not  suffice  to 
sliow  that  persons  incax)able  of  reading  the  labels 
might  be  deceived  by  the  I'esemblance.  It  must  be 
made  to  appear  that  the  ordinary  mass  of  purchas- 
ers, paying  that  attention  which  sucli  persons 
usually  do  in  buying  the  article,  wcmld  probably  be 
deceived.  In  cases  of  doubt  the  court  should  not 
grant  or  retain  an  injunction,  until  tlie  cause  is 
heard  upon  the  pleadings  and  proofs,  or  until  the 
complainant  has  established  his  right  by  an  action 
at  law.  But  if  the  court  sees  that  the  complainant's 
trademarks  are  simulated  in  such  a  manner  as 
probably  to  deceive  his  customers  or  the  patrons  of 
his  trade  or  business,  the  piracy  should  be  checked 
at  once  by  injunction.     Ibid. 

%  341.  Plaintilf  in  his  label  called  his  medicine 
"Chinese    Liniment,"    the    defendant    called  his 


Imitation. 


109 


"Ohio  Liniment ;"  from  tlie  body  of  tire  label  and 
from  the  directicms  for  the  use  of  tlie  medicine,  it  was 
clear  that  tlie  language  of  tlie  defendant  was  so  as- 
similated to  that  of  tlie  plaintilf 's  as  to  make  his 
article  apj^ear  to  Ix;  the  same  medicine  as  the  ])lain- 
tiffs,  the  altei-aticm  being  only  colorable.  Deftmdaat 
also  published  ahandbill  asserting  that  the  mtHlicine 
sold  by  him  contained  the  qualities  and  ingredients 
of  the  '"Chinese  Liniment,"  and  some  other  ingre- 
dients which  rendered  it  more  ellicacious,  and 
which  allegations  plaintiff  averred  to  be  false.  An 
injunction  was  granted  enjoining  defendant  fiom 
using  his  said  label  and  directions,  and  fr(mi  issuing 
said  handbill.  1841),  U.  8.  CircuU  CL  Iivh,  (Jofl'een 
V.  Brunton,  4  McLean,  oK). 

§  ?A2.  In  o]  der  to  convey  a  false  impression  to 
the  mind  of  tlie  iniblic,  as  to  the  true  origin  and 
manufacture  of  goods,  it  is  not  necessary  that  the 
imitation  of  an  original  trademark  shall  be  exact  or 
perfect.  It  may  be  limited  and  partial— it  may 
embrace  variations  that  a  comparison  with  the 
original  Avould  instantly  disclose  ;  yet  a  resem- 
blance may  still  exist,  that  was  designed  to  mislead 
the  public,  and  the  effect  intended  may  have  been 
produced  ;  nor  can  it  be  doubted  that  whenever 
this  design  is  ax^parent,  and  this  elfect  has  follovvcd, 
an  injunction  may  rightfullj'  be  issued  and  ought 
to  be  issued.  1849,  N.  Y.  Superior  Of.,  KT., 
DuEK,  Ch.  J.,  Amoskeag  Manufacturing  Co.  n. 
Spear,  2  i-iamlf.  l^iq^erior  CL  .091). 

§  534:1.     An  injunction  ought  to  be  granted  when- 
ever the  design  of  a  person  wdio  imitates  a  trade 
mark,  be  his  design  apparent  or  proved,  is  to  im- 
pose his  own  goods  ui)on  the  public  as  those  of  the 


i-V 


^  ; 


fVP 


110 


Imitation. 


owner  of  tlie  mark,  and  the  imitation  is  siicli  tliat 
the  success  of  the  design  is  a  probable  or  even  i)os- 
sible  (Kmsequence.     Ibid. 

%  I}44.  In  an  imitation  of  the  original  mark  npon 
an  arti(?le,  or  goods  of  the  same  description,  the 
name  of  the  proprietor  may  be  omitted — another 
name,  that  of  ilie  imitator  himself,  may  be  substi- 
tuted— but  if  the  peculiar  device  is  copied,  and  so 
cojiied  as  to  manifest  a  design  of  misleading  the 
public,  the  omission  or  variation  ought  wholly  to 
be  disregarded.     Ihld. 

%  345.  It  is  not  enough  that  the  public  may  be 
misled,  or  has  been  misled.  The  resemblance  must 
arise  from  the  imitation,  or  adoption  of  those  words, 
marks  or  signs,  which  the  person  who  first  em- 
ployed them  had  a  right  to  appropriate,  as  indicat- 
iilg  the  true  origin  or  ownership  of  the  article  or 
fabric  to  Avhich  they  are  attached  ;  and  the  resem- 
blance, Avhen  it  induces  error  and  gives  a  title  to 
belief,  must  amount  to  a  false  representation,  ex- 
press or  implied,  designed  or  accidental,  of  the 
same  fact.     Ibid. 

§  34(5.  Plaintiff's  label  was  a  paper  pasted  on  the 
body  of  a  bottle,  on  the  upper  part  of  which  was 
the  word  "Pain-killer,"  printed  in  a  scroll,  below 
which  were  the  words,  "Manufactured  ))y  Perry 
Davis."  and  below  this  an  engraving,  intended  to 
represent  the  plaintiff  surrounded  by  an  oval  circle 
bounded  on  either  side  by  a  simple  wreath,  and 
having  in  its  lower  margin  the  words,  "The  original 
inventoi",  No.  74  High  Street,  Providence."  Below 
the  circle,  in  small  type,  were  the  words,  "Copy- 
right secured,"  and  the  jirice  of  the  bottle  ;  and  at 
the  bottom  of  the  label  the  words,  "Destroy  this 


Imitation. 


Ill 


til 


label  as  soon  as  the  bottle  is  empty.  Tliis  will  pre 
vent  fraud."  The  defendant's  label  was  similarly 
fixed  to  bottles  of  similar  size  with  those  of  the 
plaintiff,  though  of  somewhat  dill'erent  shape;  at 
tiu?  upper  jtart  were  the  words,  "J.  A.  Perry's 
ye,ii,'etable  Pain-killer,''  underneath  which  was  rep- 
leseuted  the  bust  of  a  man,  and  beneath  this  the 
words,  "  Manufactured  in  Providence,  II.  I.  Price 
30  cents.  Copyright  secured."  The  devices  (m 
the  plaintiff's  label  were  on  a  light  ground,  those 
on  the  defendant's  upon  a  dark  ground,  lldd^  that 
defendant's  label  was  likely  to  deceive  the  public, 
and  to  lead  them  to  suppose  they  were  purchasing 
an  ai'ticle  manufactured  by  the  plaintiff,  instead  of 
the  defendant.  Judgment  ordered  for  plaintiff. 
(Action  on  the  case.)  18.")(),  i^nprcme  CI.  of  Ilhode 
Island,  Davis  v.  Kendall,  2  It.  I.  560. 

^  347.  The  defendant,  formerly  the  shopman  of 
the  petitioners,  set  up  an  estalilishment  of  his  own, 
and  used  laliels  corresponding  closely  as  to  their 
shape,  size  and  general  appearance,  with  those  used 
by  the  jietititmers.  The  defendant's  label  con- 
tained the  words,  "A.  Lea,  late  of  Lundy  Foot  & 
Co.,  Dublin,  Snuff  Manufacturer,  1  Dame  Street, 
Dublin,"  and  round  the  label,  "To  prevent  imposi- 
tion, ask  for  Lea's  genuine  Dublin  snuff."  On  the 
lietitioners'  label  were  printed  the  M'ords,  "Lundy 
Poot  &;  Co.,  Irisli  Snuff  Manufacturers,  Essex 
Bridge  and  Carlisle  Bridge,  Dublin,"  and  round 
the  label,  "To  prevent  imposition,  ask  for  Lundy 
Poot  &  Co.'s  Irish  Snuff."  Over  the  defendant's 
door  were  i)rinted  the  words,  "A.  Lea,  late  of 
Lundy  Foot  &  Co."  IMrl,,  that  the  case  was  not 
so  clear  as  to  induce  the  court  to  interfere  by  in- 


'   35 


'■I 


t 


i    *', 


i 

■ 


\mrr^ 


112 


Imitation. 


junction  in  the  first  instiuu"^*.  nnrl  the  petition  was 
ordered  to  stand  over  witli  liben y  to  tlie  petitioners 
to  bj'ing  ail  action  at  law.  See  2)ictures  of  the  labels 
in  the  repfjrt.  18,'5(),  J2olls  CL,  Foot  v.  Lea,  i:] 
In.s/i  Eq.  n.  484. 

§  348.  The  plaintiiTs,  Shrinii)ton  and  Hooper, 
manufactured  needles  which  Avere  packed  and  en- 
veloi)ed  in  labels  bearing  these  names,  and  stating 
tliem  to  be  "  Invented  and  made  solely  by  Shrimp- 
ton  and  Hooper,  at  the  Albion  Needle  Works, 
Studley."  The  defendant,  Laight,  residing  at 
Jledditch,  authoiized',  as  he  said,  by  one  David 
Shrimpton  Turvey,  but  who  was  not  a  needle  maker, 
sold  his  needles  in  similar  packets,  omitting  the 
words  "Shrimpton  and  Hooper,"  and  "Albion 
Needle  AVorks,"  and  substituting  the  name 
"Shrimpton  Turvey."  Ildd.,  that  defendants' 
wra[)pers  were  a  i^lain  colorable  imitation  of  the 
plaintilLs'  trademark,  and  an  injunction  was  there- 
fore issued.  18o4,  Rolls  CL,  Shrimpton  -«.  Laight, 
18  Beav.  104. 

§  1349.  In  cases  of  alleged  colorable  imitation  of 
trademai'ks,  the  court  has  not  to  consider  whether 
manufacturers  could  distinguish  between  the 
articles,  but  whether  the  public  would  probably 
be  deceived  by  the  alleged  spurious  imitation. 
Ibid. 

%  3.")0.  In  an  alleged  infringement  of  a  right  to 
trademarks,  the  court  in  every  case  must  ascertain 
whether  the  dill'ei'ences  are  made  bona  fide  in  order 
to  distinguish  the  one  article  from  the  other, 
whether  the  resemblances  and  the  dilferences  are  such 
as  naturally  arose  from  the  necessity  of  the  case, 
or  whether,  on  the  other  hand,  the  dilferences  are 


Imitati(>n\ 


ii;j 


^"^"M: 


simply  colorable,  and  tlie  lesemblancos  ^Ui'h  as  are 
obviously  intended  to  deceive  the  i)iu'cliasei'  ol'  the 
one  article  into  the  belief  of  its  beinu*  the  nianufac- 
ture  of  another  person.  Resemblance  is  a  circum- 
stance of  primary  impoi'tance  I'or  the  conrt  to  con- 
sider, because,  if  the  court  find  that  there  is  no 
reason  for  the  lesemblance,  except  for  the  pui-- 
2)osG  of  mislead inii'.  it  will  infer  tliat  the  lescm- 
blance  was  adopted  for  the  purpose  of  misleadin.L!;. 
18r)4,  Y.  C.  WoorVs  Court,  Taylor  r.  Taylor,  213 
L'//f/.  La.io  and  Eq.  R.  !281 ;  S.  C.^  23  LaioJ.  R.  {N. 
>S\)  (Jh.  2.W. 

^  iJ,")!.  The  plaintiffs  were  seAving  thread  manu- 
facturers and  winders,  at  Leicester,  and  on  one  end 
of  the  reels  used  for  thread  sold  by  them,  were  la- 
bels marked  "Taylors  Persian  Thread,"  in  a  cir- 
cular form,  liavirg  an  inner  circle  in  which  was 
marked  the  particular  quality  of  the  article  wound 
on  the  reel.  On  the  other  end  of  the  reed  was 
placed  another  circular  label,  having  in  the  centre 
tlie  ai'morial  bearings  of  the  city  of  Ivncester,  the 
Avords  "J.  &  W.  Tayh)r,  six  cord,"  and  a  ]iund)er 
denoting  the  cpiantity  of  yards  wound  on  the  reel. 
The  i)lainti!fs  commenced  their  ti'ade  in  Yo'l'^.  The 
defendant  Avas  a  thread  manufacturer  at  Manches- 
ter. In  1S.V2,  his  foreman  AA^as  applied  to  by  certain 
persons,  to  use  i*eels  for  Ids  thread  similar  to  those 
used  by  the  plaintill's,  but  this  the  defendant  then 
refused  to  do.  Subsecpiently  the  defendant  used 
for  his  thread,  reels  of  the  same  size  and  descrip- 
tion as  the  plaintiffs,  and  placed  at  one  end  a  circu- 
lar label,  Avith  the  AA-oids  "Taylor's  Persian 
Thread  "  thereon,  and  at  the  otliei'  end  of  the  reel 
a  circular  label  Avith  his  OAvn  armorial  bearings,  sur- 


■1: 


m 


jiimi  i"i»p 


114 


Imitation. 


rounded  by  the  words,  "  Sara  Taylor."     Injunction 
f/ranlid.     Ibid. 

i  1^)2.  The  plaintiffs  were  a  corporation  by  the 
nanie  of  the  Merrimack  Manufacturing  Company, 
au<l  liad  long  been  the  manufacturers  of  prints 
known  as  the  "  Meri'imack  Prints,"  and  had  usod 
trademarks  oi  various  devices,  but  all  contaiu'^xl  the 
distinguishing  word,  "Merrimack."  The  label 
hist  in  use  by  them  contained  the  words,  "Merri- 
mack Prints,  Fast  Colors,  Lowell,  Mass.,"  in  a 
Horal  wreath.  The  defendants  sold  prints  of  their 
own  manufacture,  under  a  label  with  the  woi-ds, 
'•English  Free  Trade,  Merrimack  Style,  Wairanted 
Fast  Colors,"  likewise  in  a  lioral  wreath.  These 
labels  were  about  the  same  color  and  size.  The 
wreath  and  exterior  border  were  lighter  and  more 
ojDen  in  one  than  in  the  other.  The  most  i)romi- 
nent  words  were  "Merrimack  Prints,"  and  "Merri- 
mack Style,"  resjiectively.  The  inscrii)tions  occu- 
pied in  one  of  them  two,  and  in  the  other,  three 
lines.  In  an  action  brought  to  restrain  the  use,  by 
the  defendants,  of  their  label,  and  for  an  account  of 
2:)rofits  realized  from  such  use,  the  answer  did  not 
dispute  the  plaintiffs'  right  to  their  trademark,  but 
denied  fraud  or  intention  to  imitate  ;  and  alleged 
that  their  object  was  to  advertise  that  their  goods 
were  simply  of  the  Merrimack  style,  and  they  al- 
leged that  their  prints  were  equal  in  quality  to 
those  of  the  plaintilfs.  On  a  motion  for  an  injunc- 
tion pendente  llte^  Held^  that  although  there  was 
an  evident  resemblance  between  the  labels,  that  the 
court  could  not  determine,  upon  comparing  them, 
that  the  mass  of  purchasers  would  be  deceived,  nor 
that  a  fraudulent  intention  to  imitate  was  so  mani- 


Imitation. 


11  n 


ft'st  as  to  wnrrant  an  injunction,  nntil  tlie  plaintills 
.should  establish  their  right  upon  a  trial  of  the 
issues.  18.").*),  IVriii  York  CoiniiKHi  IHeas^  G.  7'., 
Merrimack  Manul'acturin<i;  Company  v.  (rarner,  4 
/;.  1>.  Sm /'///,  :i87;  S.  C.,2  AU.  Pr.  '.US. 

^  '.iXl.  A  tradesman,  to  hrinn;  liis  i)rivilege  of 
usill^•  a  i)a)'ticular  mark  under  the  i)rotection  of  a 
court  of  equity,  need  not  prove  that  it  has  becm 
copied  in  every  particulai*.  It  Avill  he  sullicient  to 
show  that  th<'  devices  employed  bear  such  a  resem- 
blance to  his  as  to  be  calculatcMl  to  mislead  the 
public  generally,  who  are  purchasers  of  the  article 
bearing  the  device,  and  to  make  it  pass  with  tliem 
for  his  article.  Hence,  where  on  ordinary  observa- 
tion, the  labels  us<'d  by  the  two  parti<3S  Avoidd  not 
be  apt  to  be  distinguished  tlie  one  from  the  other, 
the  size,  shape,  vignette,  coloring  and  marking,  be- 
ing so  nearly  ich^ntical  as  to  make  them  easily  pass 
for  the  same,  and  the  only  difference  discernible, 
on  considerable  scrutiny,  being  in  tlie  name  of  the 
warrantor  stamped  upon  them  in  letters  so  small  as 
not  retidily  to  attract  attention,  an  injunction  was 
granted.  18."5G,  Walton  v.  Crowley,  8  Bhdchf.  Cir- 
cuit at.  440 ;  U.  S\  iJir.  Of.  2i.  Y. 

%  B.M.  xV  variation  must  be  regarded  as  immate- 
rial, which  requires  a  close  inspecticm  to  detect, 
and  which  can  scarcely  be  said  to  diminish  tlie  ef- 
fect of  the  few  simile  which  the  simuhded  label 
in  all  other  respects  is  found  to  exhibit.  1807,  N. 
Y.  Super ior  Ct.,  Sjjecial  T.,  Fetridge  «.  Wells,  4 
Ahh.  Pr.  144;  S.  C,  13  How.  Pr.  38r>. 

§  355.  The  trademark  of  the  plaintiffs,  manu- 
facturers of  spool  cotton,  at  Mile  End,  Glasgow, 
was  a  label  with  four  concentric  circles  thereon  ; 


i 


:\ 


M 


I" 


lie 


Imitation. 


the  innor  one  in  f^old,  and  tho  next  in  silvor,  Jin<l 
tJ:c  wli(;lo  hounded  by  two  (.'oncontric!  bltick  liniv-;. 
In  llic  inner  t'ii^'le,  was  file  number  of  (jotton  ;  in  the 
next,  ''.I.CIa/k,  ,]\:  ^<  Co.,  Mile  End,  (jrlas;j;o\v,'' 
at  fnc  bottom.  In  tlie  next  circle  weie  tln^  words, 
"  Six  cord  cabled  tliread,  warr'cl  200  yaids."  In  the 
outer  circle  Avei(!  the  words,  "JSol(^  agent,  VVni.VVliitcv 
wri^iiht,  New  York.'"  The'  defendant,  a.gont  of  .J. 
&  J.  CJlark  it  Co.,  manufactturers  of  tlie  same  article 
at  .S;,'e;l  Ilill.  i?aisley,  some  years  after  tlie  plaintiJl's' 
trademark  was  well  known,  adojjted  one  for  his 
cotton  to  be  sold  in  the  I'nited  States,  consisting  ol' 
concenti'ic  spaces  of  precisely  the  same  dinunisions 
as  those  of  tiie  i)laintiiVs,  of  the  same  colors,  in  the 
same  Older,  with  the  letters  in  black  or  in  gold  as 
the  plaintillV  ;  in  the  inner  circle,  the  same  number 
and  stamp  as  in  the  plaint  ill's'  ;  in  the  next  ciicle, 
tiie  woids,  "Clark  t\r  Co.,  Seed  Hill,  Paisley," 
"Clark  &  Co."  being  at  the  toj),  as  in  plaintills'.  In 
the  next  circle  were  the  words,  "Six  cord  cabled 
thread,  v»arr"d200  yards,"  precisely  as  in  plaintiilV, 
and  in  the  outer  ciicle,  were  the  woids, "  Sole  Agent, 
George  Clark,  New  York."  The  ix)sitions  ol'  the 
words  and  the  letters,  were  exactly  alike  in  both. 
JJel(/,  that  there  was  an  evident  design  to  imitate 
the  plaintiltV  mark,  and  that  the  ellect  of  the  imita- 
tion must  be  tliat  all  except  very  cautious  [>u. 
chasers  w^ould  be  deceived,  and  that  Ih''  ''•'  ndant 
should  tliereiore  ])e  enjoined  I'rom  i  ids  said 

label,  and  ilrom  any  imitation  of  it  wi,  >u]y  color- 
able difi'erences.  ISoT,  JV.  Y.  Suprant  (Jt.,  ^.  7'., 
Clark  1).  Clark,  2.5  Darh.  76. 

§  85(5.  An  imitation  of  a  trademark,  with  partial 
deferences,  such  as  the  public  would  not  observe, 
does  the  owner  of  the  trademark  the  same  harm  as 


Imitation. 


11' 


an  (Milli'O  countfU'fclf.  If  I  lie  wholcstilo  hiiyei,  who 
is  iriost  ('onvoi'siuit  with  thci  iir.irks.  is  not  mi  !<•  I, 
but  the  small  letaihM',  or  tlu'  ('onsiinicr  is.  the  in- 
jury is  the  same  in  law,  and  dillVi-s  only  in  deuiee. 
Tlie  ri^ht  of  ac^lion  mnst  exist  f(^i'tli(*  last  as  well 
ns  the  iiist.  If  all  coiisnniors  do  not  (lis('riininat(», 
ill  the  end,  it  wonld  he  indiU'eient,  oven  lo  (lie 
wholosale  bnyers,  houx  which  of  Iho  two  they 
boMi-ht,  and  thus  the  extent  also,  of  th(>  injniy  would 
be  as  fjjieat  as  it'  they  also  were  deceived.     /  A/V/. 

^  i'.j?.  The  plaint iiV  was  an  incorpoi'ated  com- 
pany', and  had  been  enga,L;ed  in  nianufaetui  injjj 
white  lead,  at  ibooklvn,  lor  more  than  tw(>ntv 
years,  and  had  been  in  the  habit,  durin,i;'  that 
ixniod,  of  markin/j;'  its  kegs  "'ihooklyn  White 
Lead  Company,"  or  "Co.,"  and  the  defendant  had 
been  en.iiaged  in  the  same  business,  at  th<'  stinie 
place,  since  1840,  and  had  icctMitly  cimngcd  his 
mark,  npon  his  kegs,  which  was  *"  Brooklyn  White 
Lead,  pure  100  lbs.,"  to  "Brooklyn  wiiilc  Letid 
and  Zinc  Comi)any."  The  defendant  had  no  sucli 
company,  //r/c/,  that  this  was  an  imitaiion  oi'  th(^ 
plaintiirs  trademark,  with  only  a  coh)rable  dill'ei- 
ence.  The  defendant  was  therefore  restrained  by 
injunction,  from  using  the  word  "Company,"  or 
"Co."  IS.-)?,  ^\  y.  .Supreme  CL,  G.  7'.,  Brooklyn 
AVhite  Lead  Co.  r.  Masurv,  !2.")  IJay!}.  410. 

$5  IJ.IS.  To  entitle  a  trademark  to  the  protection 
of  a  conrt  of  equity,  there  must  be,  between  the 
genuine  and  fictitious  marlcs,  such  general  similarity 
or  resemblance  of  form,  color,  symbols,  designs, 
and  such  identity  of  Avords  and  their  arrangement, 
as  to  have  a  direct  tendency  of  misleading  buyers 
who  exercise  the  usual  amount  of  jjrudence  and 
caution  ;  and  there  must  also  be  such  a  distinctiv*. 


i; 


i 

■yw 


^m  ' 


118 


Imitation. 


individimllty  in  the  marlis  employed  by  tlie  coun- 
tei'l'v^itcr,  us  to  procure  foi'  liini  the  benefit  of  the 
deception  resnltinij^  I'roni  tlie  gomeral  re;-<eniblance 
between  the  genuine  and  counterfeit  hibels  or  trade- 
mai-ks.  18G0,  CL  of  Com..  Picas,  F/a'l.,  Fc,  Col- 
Ja<hiy  r.  J3aird,  4  Phil.  139. 

5J  J'HO.  The  phdntitf  was  a  manufacture  of  wire, 
and  adopted  as  his  trademarlv  the  emblem  or  rep- 
resentation of  an  an(!lior.  The  defendant  followed 
the  same  business  and  assumed  as  his  trademark 
the  representation  of  an  anchor  surmounted  by  a 
crown.  The  latter  was  keld,  to  be  a  colorable  imita- 
tion of  the  former.  1803,  Pc/ore  iJie  Lord  Ch.  on 
appeal,  Edelsten  x.  Kdelsten,  ijurid  (i\\  H.)  479 ;  S. 
C,  1  D(  a.  J.  ct-  ii.  185  ;  IS.  C,  11  WtiMy  R.  H:28  ;  S. 
C,  7  Late  Tunc  a  {^N.  S.)  7G8  ;  S.  C,  1  JVeio  R.  :J0(). 

§  J3(jO.  It  is  no  answer  to  a  bill  to  say  that  all 
the  persons  who  purchased  goods  bearing  tlu^  plain- 
till"  s  trademark  were  aware  that  the  go()ds  were 
not  of  the  plaintiff's  manufacture,  nor  is  it  necessary 
that  proof  should  be  given  of  persons  having  been 
actually  deceived,  or  having  bought  goods  with  the 
defendant's  mark  under  the  l)elief  that  they  were 
manufacturetl  by  the  plaintiff,  provi  .ed  the  court 
is  satisiied  that  the  resemblance  is  such  as  Avcjuld 
be  likely  to  cause  the  (uie  mark  to  be  mistalien  for 
the  other.     Ihkl. 

^  oOi.  The  plaintiff  was  in  the  habit  of  making 
up  his  bundles  of  silk  in  a  particular  form,  with 
forty-eiglit  heads  of  silk  in  each  bundle,  tied  with 
live  strings  in  different  places,  with  the  silk  pro- 
tected frcmi  the  knots  of  the  strings  by  pieces  cX 
foolscap  paper  of  a  particular  form,  the  heads  oi  silk 
being  themselves  tied  with  silken  strings  of  differ- 
ent colors,  to  mark  the  quality  of  silk  ;  and  he  used 


Imitatiox. 


119 


to  place  under  the  centie  strins;  of  each  bimdh^  a 
label  in  a  i)articiilar  fomi,  describing  the  qualil y  of 
silk,  and  containing  the  following  pai'ticrdar  mark  : 
St.  A  '"  '••  ''  ,  which  represented  St.  A  ■■'  ''■''  *, 
the  place  where  the  iilainriff's  manufactory  was, 
and  which  was  well  known  in  the  trade  as  the 
plaintiff's  trademark.  The  defendant  manufac- 
tured for  one  Young,  for  exportaticm,  a  quantity  ol' 
silk  in  bundles  in  exact  imitaticm  of  the  plaintiirs, 
and  affixed  to  them  a  label  exactly  like  that  of  tiie 
l)inintifrs,  except  that  the  mark  St.  A  '••'  ''■''  ''" 
was  omitted,  in  obedi^mce  to  an  order  from  said 
Young  to  supply  him  with  silk  mude  up  to  mat(di 
one  of  the  plaintiffs  bundles,  then  sent  him,  with 
the  exception  (d'  the  ti-ademark.  It  was  not  i)roved 
that  any  one  had  l)een  in  fact  deceived  by  the  de- 
feVidant's  bundles.  The  Vice  Chancellor  was  in 
doubt  as  to  any  fraudulent  inttuit  on  th(^  part 
of  the  defendant,  and  did  not  believe  that  his 
bundles  were  calculated  to  deceive,  //c/r/,  that  the 
plaintiff's  bill  should  be  dismissed  Avith  costs. 
186:},  Vice  Ch.  WoocVs  Court,  \Voolam  i\  Kat- 
cliir,  1  Ileiii.  ct-  2L  259. 

§  802.  It  is  no  justilicaticm  for  a  defendant  to 
sav,  "the  i)laintiff  has  two  ways  of  identifving  his 
goods,  and  I  have  only  stolen  one  of  them." 
Hence,  Avhere  only  one  of  a  plaintiff's  trademarks  are 
imitated,  that  imitation  will  be  enjoined.  1808, 
Vice  Ck.  WocxT 8  CY.,  Braham  ?\  Bustard,  9  Law 
Times  {N.  S.)  199  ;  S.  C,  1  IJem.  &  M.  447  ;  S.  C, 
11  W.  U.  1001  ;  S.  C,  2  New  It.  572. 

§  808.  It  is  not  necessary  to  maintain  a  prayer 
for  an  injunction,  that  the  Avhole  of  a  tiademark 
should  have  been  imitat'xl.     ibid. 

§  804.     The  i>laintiffs  manufactured  and    sold  a 


if 


w 


120 


Imitatiox. 


soap  wliicli  they  callod  "The  Excelsior  Wliite  Sof!: 
S;);ii),'''  and  the  dei'endants,  six  month.-;  t hin-eai'ttM- 
nora;n(i;if'od  to  sell  a  soap  under  the  nanu.^  of  "•  I3us- 
tard  &  Co. 's  Excelsior  White  Sol't  Sonp."  Both 
plaintili'.-j  and  defendants  nsed  their  respective 
names  on  labels  attached  to  their  jars  and  cnsks,  and 
on  handbills  and  placards,  accoi-ding-  to  the  usual 
custom  iji  such  cases.  It  was  held  that  defendants' 
arti(^]e  was  likely  to  deceive,  and  they  were  en- 
joined fi'om  using  the  words  "Excelsior  White 
Sol't  Soaj)"  for  any  soap.     I  hid. 

§  305.  Where  the  plaintiir's  trademark  consist- 
ed of  the  letters  "L.  L."  for  whiskey,  which 
the  plaintiff  advertised  as"L.  L.  Whiskey,"  al- 
thougli  thos{^  letters  on  the  labels  were  ahvays  pre- 
ceded bv  the  word  "Kinahan's,"  and  the  defen- 
dant  used  for  his  whiskey  the  letters  "  L.  L.'-  and 
sometimes  "Bolton's  L.  L."  :  Ifdd,  that  the  de- 
fendant was  guilty  of  a  plain  and  distinct  piracy. 
That  the  use  of  the  mark  "L.  L.,"  by  the  defendant, 
was  calculated  to  lead  the  iniblic  to  believe,  either 
that  he  had  Kinahan's  permission  to  use  it,  and  had 
thus  accpiiretl  the  right,  or  that  the  article  which 
he  sold  was  the  same  as  Kinahan's.  That  in  that 
way  as  much  injury  might  be  dcme  as  in  any  other, 
by  inducing  the  belief  that  the  spurious  article  Avas 
genuine,  Avhicli  was  the  probable  consecpienco  of 
such  invasion.  Defendant  enjoined.  ISd;),  Lord 
Ch.  Bit.VDY,  Kinahan  <}.  Bolton,  1*")  Irisk  Ok.    7."). 

^  ;5G().  A  trademark  was  adopted  by  the  j)lain- 
till's  in  18.18,  and  c(msisted  of  the  hgure  of  an  ox, 
on  which  was  printed  the  word  "Durham,"  the 
word  "Ilarriscm's,"  being  printed  above  said 
iigure,  and  the  word  "  Mustard"  below  it.  At  the 
exhibition   of  18G2,   the  plaintiffs  exhibited  their 


Imitation. 


121 


'■K 


miislard   and  obtained    an  award  of    "honojablo 
mention,"  of  wliicli  they  aftei'wnrds  added  a  notice 
on  their  hibels.     In  May.  180;5,  the  (UMenthints  af- 
lixed  to  th(Mi'  ennisters  and  tins  of  mushird,  lalu'ls 
containin'j,'  as  a  trndenuirlc,  the  iiii'iire  of  an  ox.  in 
form  and  altitude  like  that  used  by  th(;  ])!aintiirs, 
but  without  the  Avord  "IJurham."   an<l  witli   tlie 
name  "Taylor,"  substituted  fo-  -'Harrison."     The 
defendants'  label  also  Cfmtained  the  words  "First 
Prize  and  ^h'dal  Ox,"  printed  above  the  liuMire  of 
the  ox,  and  beh)w  it  tlie  words,    "In  any  class  ex- 
hibited 18(52."     The  defendants  d(^])0!u>d  that  Ihey 
knew  nothin!:?  of  the  plaintiifs'  trad(miark.  or  oT  his 
"honorable  mention"   aforesaid,    until   180!],  and 
that  they  (the  defendants)  had  conceived  the  idea 
of  theii"  tracUnnark  from  seeing  a  ])riz(^  ox  ;it  tlie 
cattle  show  at  TslinLi'tim.     Tlie  plaintiifs  proved  that 
their  mustard  was  asked  for  as  the  "Ox  Mustard.'"' 
whic^li  tlie  c(jurt  said  was  not   contradicted  bv  the 
evidence   that  pei'sons  in  the  trader  relied  on   the 
name,  and  not  on  the  mark.      Injunction  .uranted. 
ISO."),  l)e fore  V.  C.   Wood,   IlarriMm  r.  Tayloi',   11 
Jwis'f  lY.  .S'.  408  ;  S.  C,  12  Lcko  Times  {X.\^:)  IWD. 
)^  ;>G7.     Where,   in   a  stam[)  used  by  the  dehm- 
dants,   the  form  of  the  printed  words,  the  words 
thenselves,   and   th(»    pictured   symbol  introduced 
among  them,  so  nuich   diifered  from   that  of  the 
l)lalntilfs',    that  any   perstm  with  reasonable  carc^ 
and  observation  must  see  the  difference,  and  could 
not  be  misled  into  taking  one  for  the  other  :    //r/rf, 
that  there  had  been  no  infringement.      Vli/thnflhiifi 
noil  (lormcntlhva  le{/e.s  siihi^erTjiunt.     (!See  the  i-e- 
l)ort  for  ])ictures  of  the  labels.)    1805,  JIoiisc  or 
Ijor<l,s,   TIk;  LeatlKM*  Cloth  Company  (Limited)    r. 
The  American  Leather  Cloth  Company  (Limited)^ 


1»!i 


,-  \s 


*:i' 


122 


Imitation. 


11  //.  of  Lords  Caf<et;,  ty2\\ ;  S.  C,  35  Law  Jour.  {N. 
K)C/f'.  ry.i:  S.  C,  -1:3  Wee/d//  U.  873;  S.  C,  12 
L'lic  Times  ^iV.  H.)  742  ;  S.  C.,  C  New  IL  209  ;  S. 
C,  11  Jurist  (N.  8.)  513  ;  affirming  S.  C,  33  Law 
Jow.  {N.  K)  Ch.  lUl);  S.  C,  12  m^^/t^^  IL  281); 
S.  C,  10  Jurist  {N.  X)  81  ;  9  Lmio  Tiuwfs  U.  (X 
/?.)  558  ;  and  I'oversing  8.  C,  1  //.  rt^ifZ  J/.  271; 
S.  C,  32  7>r/70  .y^w/-.  R.  {N.  S.)  Ch.  721;  iS.  C, 
11  Tr6Y'/.-Zy  7t\  931  ;  S.  C,  8  Lam  Tunes  11,  (iv'. 
>S'.)  829. 

§  3G8.  It  is  nmdi  more  easy  in  any  case  tore- 
cognize  a  (liiVerence,  however  minnte,  after  it  is 
l")ointed  out,  than  to  discover  it  by  the  ordinary  in- 
spection bestowed  by  jmrchasers.  It  would  luirdly 
be  a  fair  test  of  a  (counterfeit  that,  after  its  errors 
or  deviations  from  the  original  were  Ivuown,  it  could 
be  mistaken  for  it.  The  proper  question  shoidd  be, 
not  dilferentces  but  points  of  resemblance  ;  not  the 
utmost  vigilance  of  purchasers,  but  ordinary  obser- 
vation. The  value  of  the  goods  to  be  sold,  and  the 
intelligence  of  the  persons  dealing  in  and  consum- 
ing them,  besides  other  circunisj"ances,  are  also  to  be 
taken  into  account  in  determining  the  adaptibility 
of  a  simidated  trademark  to  deceive  purchasers. 
It  is  eminently,  therefore,  a  question  of  fact,  to  be 
submitted  to  the  practical  experience  of  a  jury, 
whether,  in  a  particidar  case,  a  resemblance  was 
likely  to  deceive  the  community.  1805,  N.  Y. 
Superior  67.,  8.  T.,  Swift  «.  Uey,  4  Robertson, 
(511. 

§  309.  To  entitle  a  trader  to  relief  against  the 
illegal  use  of  his  trademark,  it  is  not  necessary  uhat 
the  inutaf  ion  thereof  should  be  so  close  as  to  deceive 
persons  seeing  the  two  marks  side  by  side ;  but  the 
degree  of  resemblance  must  be  such,  tiiat  ordinary 


Imitation. 


123 


'  J 


pui'cliasers  proceeding  with  ordinary  cantion  are 
likely  to  be  misled.  1800,  Bifore  IaI.  (Jh.  Cran- 
worUi  Oil  appeal,  Seixo  i).  Provezende,  Liuc  11.  1 
(Jh.  192;  S.  C,  12  Jurld  {N.  H.)  2!r>;  S.  C,  14 
WceJdu  JL  3.57;  S.  C,  14  Law  Tlmoi  R.  {N.  >S.) 
314. 

§  370.  The  plaintiff,  a  Portuguese  nobleman, 
was  the  owner  of  a  vineyard  on  the  south  bank  of 
the  Duro,  called  the  Quinta  do  Seixo  (tlie  word 
"Seixo"  meaning  stcmy  or  pebbly).  Poi-tuguese 
nol)lenicn  usually  niarked  the  casks  which  contained 
the  prodiu'e  of  their  vineyards  with  a  crown  or 
crowns.  The  plaintilf  had,  since  1848,  stamped  the 
top  of  his  casks  with  his  coronet,  the  lett'-^i's  "13. 
S.,"  and  the  date  of  the  year;  and  the  side  of  his 
casks,  at  or  near  the  bung,  Avith  his  coronet,  tlie 
word '•  Seixo,"  and  the  date  of  the  year.  Hence, 
the  ])laintilf\s  wine  had  at'quired  in  the  London 
market  the  name  of  the  "Crown  Seixo"  wine,  un- 
der which  name  it  had  attained  considerable 
celebrity.  The  defendants  since  18r)4  had  been 
proprietors  or  farmers  of  a  vineyard  adjoining  that 
of  the  i)laintilf,  and  of  some  other  small  vineyards 
near  it,  but  on  the  opposite  bank  of  the  Dui'o.  In 
1802  the  defendants  adopted  as  their  trademai'k  a 
brand  on  the  top  of  their  casks  of  a  (;oronet,  the 
letters  "  C.  B."  (the  initials  of  their  iirm),  the 
words  "Seixo  de  Cima"  (meaning  Upper  Seixo), 
and  the  date  of  the  year,  and  they  put  the  same 
brand  or  stamj)  at  or  near  the  bung.  The  defend- 
ants were  enjoined.     lOid. 

§  371.  It  is  not  necessary  for  a  jilaintiff,  in  order 
to  receive  the  protection  of  a  court  of  equity,  to 
show  till.,  his  whole  trademai-k  has  been  pirated  or 
simulated.-   A  false  impression  can  be  as  well  con- 


■  j.-ij 


^^11 


~ 


124 


Imitation. 


voyod  tf)  tliG  mind  of  the  public,  luid  especially  to 
the  umvniy,  by  a  partial  as  by  a  total  counterfeit. 
The  desi'^'u  to  defraud  may  l)e  as  apparent,  and  is 
i^eneraliy  more  injujious,  in  the  partial  than  in  the 
entire  imitati(m.  Where  the  trademark  is  a  c(m- 
spicuous  device,  connected  with  the  name  of  the 
true  proprietor,  of  course  the  imitator  would  de- 
sire to  avoid  tile  offense  of  forgei'y,  and  would  omit 
on  his  own  article  the  name  of  the  tru(^  proprietor, 
and  substitute  his  own  ;  but  the  real  device  might 
be  copied  with  the  imitator's  name,  and  other 
words  of  the  original  added  which  may  be  also 
truti  as  reu'ards  the  in^iti'^or's  article,  and  vet  as 
effectually  mislead  the  public  as  any  other  w^ay. 
ISfKi,  iV.  Y.  ^xpreiue  Vt.,  S.T.,Qi\\oitv.  Esterbrook, 
47  B(irh.  4.")o. 

§  872.  A  trader  niny  establish  a  trademark  by 
the  use  of  a  crest,  and  anything  which  amounted 
to  an  imitation  of  the  crest  as  a  trademark  would 
be  restrained  by  the  court.  But  the  use  of  a  differ- 
ent crest  by  another  maker,  if  not  accompanied  by 
other  indicia  to  make  it  a  colorable  imitation  of  the 
trademark  of  the  plaintiff',  will  not  be  restrained. 
18GG,  V.  C.  WoocTfi  CL,  Beard  v.  Turner,  VS.  L.  T. 
It  {N.  8.)  747. 

§  373.  A  trader  had  jn-oduced  and  sold  an 
ink  whic.i  he  designated  ''  Stephens'  Blue 
Black,"  and  it  was  shown  to  the  public  in  a 
label  in  white  capital  letters  of  large  type.  The 
defendant  had  sold  an  iidv  in  bottles  similar 
in  size  to  the  plaintiff's,  designated  as  "Steel- 
l)en's  Blue  Black,''  also  in  a  label  in  white 
capital  letters  of  large  type.  Ilelfl,  that  this  was  a 
colorable  imitation  of  the  plaintiff's  trademark,  and 
the  defendant  was  restrained  by  injunction  from 


Imitation. 


125 


i.. 


the  fnrtluM-  use  of  if.     18G7,  V/ee  Cli.  Wood's  CL, 
Stephens  r.  Pe.-l,  10  L.  T.  JL  {^\  /<)  M.'). 

,^  374.  The  court  will  not  restrain  the  use  of  a 
hibel  on  the  ,<iTonml  of  its  genei'al  resenibhuiee  to 
\\w  tradeniark  of  another  niannfaeturer,  il'  it  is  dif- 
ferent in  th(^  points  v.-liich  a  customer  would  look 
at  in  order '.o  see  whose  manufacture  he  was  pui-- 
cluisinu'.  See  pictures  of  the  two  labels  in  r)lackwell 
V.  Crabb,  ■]()  fyiw  Jour.  li.  (xT.  S.)  Ok.  r)04,  1807, 
Vice  67/ .  Wood'.^'  01. 

§  ;J7o.  To  entitle  the  owner  of  a  tradeniark  to  an 
injunction  to  prevent  its  use  by  another  i)ersoii, 
there  uiust  be  in  the  coi)y  siu'h  a  <i:eiu^ral  resemblance 
of  the  forms,  words  and  symbols,  in  the  original, 
as  to  mislead  the  public.  A  suflicient  distinctive 
individuality  must  be  presented,  so  as  to  secure  for 
the  person  himself  the  beneiit  of  that  deception 
which  ii'eneral  resemblance  is  calculated  to  produce. 
The  court  will  not  interfere  when  ordinary  attenticm 
will  enable  purchasei's  to  discriminate ;  and  it 
must  also  jippear  that  the  ordinary  mass  of  pur- 
chasers, paying  the  usual  attention  in  buying  the 
article  in  question  would  be  deceived.  AVhere  the 
com[)lainant  stamped  the  Jars  of  his  manufac- 
ture  with    the   woi'ds    "The    Hero"    and    "The 

"Ilero- 

Ileroine,"  and  sometimes  the  ,  and  the  de- 

ine," 
fendant  lettered  the  jars   of  his  manufacture  as 

"Hero- 
follows:  ,  the  letters  "ine"  underneath  the 

ine," 

word  "Ilei'o"  being  so  faint  as  to  be  j^ractically 
illegible,  and  proposed  to  manufacture  jars  Avith 
the  name  "The  Heroine"  blown  on  them,  it  was 


3  «l 


'^\ 


12G 


Imitation. 


u 


held  that  the  use  of  the  word  "Heroine"  or 


Hero- 


ine 


by  tlie  defendant  on  liis  jars  would  deceive  the  mass 
of  ordinary  i)urcha8ers,  and  he  was  tlierefore  re- 
strained by  injunction  from  such  use.  1808,  CY.  of 
Com.   Plcaft,   Pkil.   Pa.^  llowley  ?j.   Hongliton,   2 

%  87(5.  Plaintiffs,  who  were  brewers,  and  not 
bottlers  of  ale,  for  many  years  had  been  in  the 
habit  of  issuing  labels  to  their  customers  who 
bottled  ale,  and  such  labels  were  affixed  to  bottles 
in  which  plaintiffs'  ale  was  sold,  as  evidence  that 
the  ale  was  genuine.  Plaintiffs'  label  was  of  an  oval 
shape,  wUh  outer  and  inner  ornamental  border; 
the  si):i,ce  within  the  inner  border  was  carved  with 
an  ornamental  design  in  net  work  of  a  red  color, 
and  upon  the  middle  was  represented  n  tiiangular 
block  of  red  color  in  the  form  of  a  pyramid,  with 
the  words  "Trademark,"  printed  in  ])lack  ui)on 
the  base  of  the  triangular  block,  and  surrounrling 
and  encircling  the  two  upper  sides  of  the  triangle 
or  pja-amid  were  printed  in  black,  the  words  "Bass 
&  Go's.  Pale  Ale,"  and  below  the  base  of  the  trian- 
gle were  printed  in  black,  as  a/ac  simile  of  the  sig- 
nature of  plaintiffs'  firm,  the  words  "  Bass  &  Co.," 
and  underneath  the  signature,  the  words  "Bottled 
bj^"  followed  by  the  name  and  address  of  the  cus- 
tomers to  whom  the  label  was  issued.  Defendants' 
label  bore  a  general  resemblance  in  foim  and 
design  to  plaintiffs',  but  differed  in  the  folloAving 
particulars :  Instead  of  the  triangular  block,  there 
was  represented  in  the  middle  of  defendants'  label, 
a  Spanish  shield  reversed,  somewhat  smaller  than 
plaintiffs'  triangle;   instead  of  "Bass  &  Co.,"  the 


I.MITATIOX. 


127 


words  "East  India  Pule  Ale,"  in  a  similar  position, 
andnfac  simile  of  deieiulants'  signature,  '•  Dawber 
&■  Co.,"  took  the  place  of  plaintiffs'  signatui'e. 
Upon  outer  l)0]'der  of  iilaintillV  wej-e  tlie  woids, 
"This  label  is  issued  by  liass  &  Co.,  Brewers,  I'.iir- 
ton-upon-Trent."  Defendants'  label  had  W)  innvr 
boi'dei',  but  on  the  outer  border,  in  consiih'rably 
larger  characters  than  the  corresponding  words  in 
plaintiffs',  was  printed,  "This  label  is  issued  and 
printed  only  by  us,  Dawber  &  Company,  'i'ho 
Brewerv,  Lincoln."  On  the  defendants'  label  were 
also  the  words,  "Bottled  bv  Dawber  cl'  Co.,  Lin- 
coin."  Though  the  ground  of  both  labels  was  of  a 
reddish  hue,  in  the  labels  used  by  fourteen  o!her 
firms  of  ])rewers,  which  were  produced  in  court,  r(^d 
was  the  prevailing  color,  and  all,  in  shape  and  size, 
much  the  same  as  phiintilfs'.  Defendants  iiudei'- 
took  to  print  their  crest  in  black  (a  lion  raui])ant)on 
the  Spanish  shield.  The  coui-t  found  perfect /vo//^/, 
/Ides  on  the  jmrt  of  the  defendants,  and  being  of 
opinion  that  nobody  coidd  be  deceived,  wfio  looked 
at  the  labels  attentiv<dy,  notwithstanding  their  gen- 
eral resemblance,  dismissed  the  bill  with  costs  to  de- 
fendants. 1800,  Bolls  CL,  Bass  v.  Dawber,  19  L. 
T.  11.  N.  H.  G2f). 

§  *]77.  The  imitation  of  the  original  trademark 
need  not  be  exact  or  perfect.  It  may  be  limited  and 
partial.  jS'or  is  it  requisite  that  the  whole  should 
be  pirated.  Nor  is  it  necessary  to  show"  that  any 
one  has  in  fact  been  deceived,  or  that  the  party 
complained  of  made  the  goods.  Nor  is  it  necessary 
to  show  intentional  fraud.  If  the  court  sees  that 
complainant's  trademarks  are  simulated  in  such  a 
manner  as  probably  to  deceive  customers  or  patrons 
of  his  trade  or  business,   the  piracy-  should    be 


•..V:, 


WT^ 


f 


128 


Imitatiox. 


rlierkod  at  onco  by  injinici!  :.  1800.  FiKprcmo  Ct. 
of  Missouri,  Filley  v.  Fassetl,  41  .^n>i.<;ourl,  108. 

§  IJ78.  A  pnrly  will  ])(>  resli-aiiied  by  iujiiiK'lion 
fiom  nsinii;  :i  label  ns  a  tiadeninrk,  r(\sf'nil)lin,'j;  one 
u.-.c(l  by  anollicr  in  size,  form,  color,  woi'ds  juid  sym- 
bols, though  in  many  respects  dilferent,  w  hci'o  it  is 
apparent  that  I  lie  desi^-n  was  todepait  fi'om  tliei^vn- 
nln(;  label  snllicientlv  to  constitute  a  diU'eriMice  wIkmi 
tlie  1  wo  wei'(^  conipai'ed,  and  yet  not  so  miicli  so, 
that  the  diirei-ence  would  be  detected  bv  an  ordinary 
I)archaHer  nnless  his  attention  Avere  particularly 
called  to  it,  and  he  had  a  very  perfect  recollection  of 
the  other  label.  And  in  such  a.  case  it  will  be  in- 
fern^d  that  the  design  was  to  deceive  and  to  obtain 
in  tlui  raanui'actur(^  and  sale  of  an  ai'ticlo  any  benelit 
or  advantage  that  might  be  gained  ])y  its  being 
l)urcha:>ed  for  another  article  of  the  sa?n(^  descrip- 
tion, which  was  known  and  distinguished  by  a 
particular  trademaik.  J 809,  N.  Y.  Common,  Pleas, 
S.  71,  Lock  wood  'o.  Bos-:wi.ck,  2  Z>r/7//,  521. 

§  '379.  The  defendants  Avere  enjoined  fi'om  nsing 
a  label  bearing  the  name  "Bovina,"  on  the  ground 
that  it  was  an  imitation  of  a  label  used  by  the 
plaintiffs,  bearing  the  name  "Boviline,"  the  labels 
having,  also,  otherwise,  a  close  resemblance  to  each 
other.     Ibid. 

%  880.  The  plaintiffs  used  the  words  "Stove 
Polish — Dixon's  Prepared  Carburet  of  Iron,"  as 
their  trademark.  The  defendants  were  restrained 
from  using  "J.  C.  l)ix(m's  Stove  Polish."  1870,  CI. 
of  Com.  Pleas,  Phil.  Pa.,  The  Dixon  Crucible  Co.  r. 
Guggenheim,  2  Brewster,  321  ;  S.  C,  7  Phila.  408. 

^  881.  To  justify  an  injunction  against  a  defend- 
ant from  the  use  of  a  certain  brand  as  an  alleged 
counterfeit  or  imitation  of  that  of  the  plaintiff,  it 


Imitation. 


129 


should  jit  lonsf  apponr  tliat  tlio  rosomblanco  Ix^twoon 
the  two  hraiids  was  siillici('Ul!y  close  to  laisc  the 
l)i'()l)al)ilify  of  mislake  on  the  part  of  the  public,  oi- 
(lesiuii  and  piirp!)se  lo  mislead  and  deceixe  (Hi  llie 
parr  of  lii.'  defendants.  iSTO,  i^iiprciiie  Cf.  of  Mis- 
.sf>nri.  McCnilney  r.  (iarnhai't,  4.")  Mo.  (4  Pos/ )  ,V,):5. 

5^  :}8:>.  The  ])laintill's  reclilied  whiskey,  and 
branded  a  class  of  their  goods  with  a  device  con- 
sistinu"  of  the  i(>])i'esentation  of  two  anchoi's  placi'd 
near  tou'ethev  in  an  upright  position.  lh(>  u])per 
l)arts  incliiung  outward,  with  ii  rope  attachment. 
Over  the  de\  ice.  in  circular  form,  Avei'e  the  initials 
S.  .McC.  The  device  and  letters  were  stencileii  ni)on 
the  heads  of  bai'ivls  containing  a  parliculai' article 
of  whiskey,  known  in  tli(^  trade  as  "double  uiu'lioi-"' 
or  "double  anchoi-  whiskey.'"  The  defendant 
stenciled  upon  the  heads  of  his  whiskey  bai'rels  ji 
device  consisting  of  the  repivsentation  of  two  ])icks 
faced  near  togt-ther  in  an  upiight  position,  with  the 
handles  inclining  inward.  Pietween  the  liandles 
was  suspended  a  ])air  oi'  balanc(\s  or  scales.  The 
defendant's  name  was  placed  over  the  picks,  and 
the  words  "Old  I^ourbon''  underneath;  the  whole 
inscrli)tion  reading  *'J.  II.  (Tarnhart's  Old  Bour- 
bon,"' lie  used  the  wliiskey  thus  put"  up  and 
branded  for  his  mountain  trade,  and  called  it  the 
"pick  brand."  The  resemblance  between  th(»  two 
brands  was  held  to  be  too  sliglit  to  be  likely  to 
mislead,  and  an  injunction  was  refused.     Ibid. 

%  883.  A  similarity  between  two  trademarks 
used  by  dilTerent  manufacturers  for  tlieir  goods, 
although  of  such  a  character  as  to  induce  a  belief 
in  the  mind  of  tlie  public  that  thej'  belong  to,  and 
designate  the  goods  of  the  same  manufacturer  or 
trader,  is  not,  of  Itself,  sufficient  ground  for  a  pro- 


V. 


V-M 


-i*.-' 
•i*'' 


f'    '    6  ."■* 


(i-i 


130 


Imitatiox. 


liibition  of  the  use  of  such  tiadenunk  by  him  wlio 
(lid  not  hi'st  adopt  it.  Tlint  siniilnrity,  to  <Mitill(! 
the  oii,n'iii;itor  to  tlio  protection  of  tlic  law.  must  Iw: 
siicli  as  to  amount  to  a  false  representation,  )i<»t 
;ilo:i('  thai  the  two  articles  bear  tliesame  oi'iiiin,  l)ut 
that  th<!  ;L!,'oods  to  Avliich  the  simulated  mark  is  at- 
tached ar(!  th(?  manufacture  of  him  who  iirst  appi'o- 
l)i'iat('d  the  trademark.  In  this  c<msists  the  «>sscnce 
of  the  wron^-  done.  J87(),  S//pr(u//(  Covri  of  Jlli- 
110/'. s,  Candee  t\  Deere,  CA  lU.  4^9. 

^  I]84.  In  this  case  tlie  j)arty  alleging]?  a  violation 
of  his  trad(MTiark  upon  plows  manufactured  by  him 
at  tlie  town  of  Moline,  Illinois,  had  in-anded  or 
stenciled  on  the  beams,  the  words  'M(»hn  Deere," 
in  large,  heavy  capitals,  in  l)lack  j)aint,  on  the 
segment  of  a  circle,  with  the  words  "^Moline, 
111.,"  in  a  horizontal  line  underneath,  in  smaller 
capitals  in  like  black  paint,  with  a  dash  or  ilourish 
between  them.  The  brand  or  mark  upon  the  other 
plows,  which  constituted  the  alleged  violation,  was 
this  :  The  words  "  Candee,  Swan  &  Co."  in  smaller 
capital  letters,  on  a  segment  of  a  circle  at  least  two 
inches  longer  than  that  of  "John  Deere,"  and  the 
address  "  Moline,  111."  in  still  smaller  capital  let- 
ters, on  a  horizontal  line  underneath,  and  a 
dash  between  them.  Held.,  that  while  there  was 
some  resemblance  be-tween  these  brands,  there  was 
no  such  similarity  as  would  show  that  "Candee, 
Swan  &  Co."  intended  thereby  to  sell  their  i)lows 
as  plows  manufactured  by  "  John  Deere."     I  hid. 

§  38o.  It  is  an  infringement  of  a  trademark,  even 
though  the  imitation  and  original,  when  placed  side 
by  side,  would  not  mislead,  if  the  similarity  is  such 
that  a  difference  would  not  be  noticed  when  seen  at 
different  times  or  places.    1871,  Indianapolis  Su- 


Imitatiox. 


131 


pcrior  n..  K  T.,  Solil  r.  Geisondorf,   1  WiUon,  0(> 

^  ;?sr5.  The  iniit:if  ion  of  tlio  trndciiiiirk  <»f  nnoflici' 
to  l»('  milauriil,  iMM'd  not  bo  copied  in  ('v«M'y  ])!ii'ti('ii- 
liir;  itis  sMdlcicnt  to  \v;ii'i;int  ('(luittiMc  rdid'  lliiit 
it  islilvcly  to  niislciid  :uid  deceive  ;  nccoi-dinuiy,  \\\\ 
iniitiitioii  of  ;i  iniinuriictMrer's  laliel  in  evei-y  icspect 
lilvc  th<' oi-iuinnl.  exc<'pt  tliiit  '' Ifostettei"'"  was  \\\- 
teicd  to  "  llolsteter,"  and  tlie  words  ••  ITosterter  A: 
Smith  wei'c  clian^'ed  to  "  Iloistetei'  A:  Sniyte,""  was 
held  to  be  il]ei;a].  and  ^n-onnd  I'oi'  an  injnnclioii  and 
for  damages.  bS71,  r.  K  Ciiriiif  r/.,  Krhnis/,;/, 
Ilostettci-  /'.  Vowinkle,  1    DUhnu  IJ'ii). 

^  '587.  In  niatt(>rs  of  tmdeniarks  or  labels  for- 
medical  componiids,  mere  similarity  of  si/.e.  or 
sqnare  pjickagos  or  of  classilication  of  disease^;  (>r 
symptoms,  is  insnfficient  to  invoke  oqnitable  inter 
ferencc.  Componndinuf  medicines  is  an  open  ti-ade, 
and  iH'otection  bv  law  is  onlv  antlioi'ized  when  the 

J.  a.'  •/ 

peculiar  symbols  and  devices  are  put  nponihe  pub- 
lic in  fraud  of  individual  riglits  acquired  by  pri- 
ority of  use  and  title  therein.  1871,  i<uprcme  (H. 
of  (i<orfji((,  Elli.s  T.  Zeilen  k  Vak,  42  (h'(tr(jli(,  01. 

^  :38S.  The  plaintiffs,  ownei-s  of  the  Stark  :N[ills. 
manufactured  seandess  bags  bearijig  the  woid 
"Stark"  over  a  semi-circular  arch  with  the  letter 
A  below.  The  defendants  made  and  sold  similar 
goods,  with  the  word  "Star"  over  a  semi-circular 
arch,  Avith  the  letter  A  below.  The  court  enjoined 
the  defendants,  and  a  jury  subsequently  gave  a  ver- 
dict in  favor  of  the  plaintiffs  for  damages.  1871, 
JJ.  S.  Circuit  Ct.^  Pean.^  Gardner  v.  Baily,  unre- 
ported. 

§  5389.  An  injunction  was  issued  restraining  the 
defendants  from  using  wrappers  which  were  in  imi- 


• 


182 


Imitation. 


tiition  of  those  of  the  phiintiffs,  and  on  appeal  t]ie 
Lord  ChaiieeUor  said  that  though  no  ojie  particidar 
niMi'k  was  exactly  imitated  the  combination  was 
verv  similar  and  likely  to  deceive  :  that  it  was  true 
t.hev(!  was  no  i)roof  that  any  one  had  been  deceived, 
oi'  tiiat  the  jtlaintift's  Imd  incniired  any  loss ;  but 
"wheie  the  siiuilaritv  was  obvious  that  was  not  (;i' 
importance.  The  ap[)eal  was  therefore  dismissed 
with  costs.  hS7;2,  (Jh.  CI.  of  Appeal,  Abbott  v. 
]5a!;ers"  and  Confectionei-s  Tea  Association,  Wec/r- 
lll  Nofr.s,  p.  ;U  ;  afUrmiiig  S.  C,  WecJdy  Notes,  1871, 
p.  207. 

§  ;}!)().  In  decidinii;  the  question  of  infringement, 
it  is  not  sullicient  to  pronounce  against  its  existence 
to  descry  dissimilai'ities ;  but  it  occurs  whenever 
th(^  laiitation  is,  u})on  the  whole,  such  as  to  de- 
ceive the  unwary  purchaser,  notwithstanding  cer- 
tain marked  diiferences  not  likely  to  arrest  the 
attention  or  challenge  the  scrutiny  of  an  oi-din-aiy 
unskillful  incpiirer  and  buyer.  One  label  read 
"(iieuuinc  Durham  Smoking  Tobacco ;"  the  other, 
"Tile  Durham  Smoking  Tobacco;"  one  had  the 
side  view  ol'  tlie  Duiham  bull  ;  the  otlier,  that  of 
his  head  on  a  medallion.  The  color  of  the  paper 
was  the  same.  Heh!,  that  defendant  should  be  en- 
joined in  the  use  of  his  label  (the  one  containing 
the  bulTs  head),  aiul  t'nat  an  account  be  taken  by 
a  master  of  the  profits  miule  by  the  (hrfendant  fjom 
Ids  sales  under  the  simulated  trademaik  aforesaid. 
1872,  U.  ^'.  Clrrait  CI.  Va.,  l^lackwell  v.  Armistead, 
5  Am.  Law  Tlmcx,  8.5. 

§  1501 .  For  the  puri)ose  of  establishing  a  case  of 
infi'iugemeut,  it  is  not  necessaiy  to  show  tliat  there 
has  been  the  use  of  a  mark  in  all  respects  cori-es- 
pondiug  with  that  which  another  person  has  ac- 


Imitation. 


133 


quired  an  exclusive  riglit  to  use,  if  the  leseuiblauce 
is  sucli  as  not  only  to  show  an  intention  to  dectMve., 
but  also  such  as  to  be  likelv^  to  make  unwary  ixir- 
chasers  supi)ose  that  they  are  purchasiuiL;-  vhe  article 
sold  bv^  the  i)artv  to  whom  the  iii>ht  to  use  the 
ti-adcniaik  belongs.  Li>rd  Ciiklmsfoim),  Iloitsi'  of 
Lords,  1872,  W^otherspoon  (\  Currie,  27  Lnio  TIdk^h 
R.  (.y.  H.)  \\%\ ;  S.  C,  /..  R.  o  Bit  if.  &  Jr.  A  p.  ."iOS  : 
S.  C,  42  Law  Jonr.  11.  {K.  H.)  (Jh.  130  (containing 
pictures  of  the  labels  in  (question). 

^  302.  Where  the  defendant  puts  up  for  sale  his 
manufactured  article,  with  labels  and  wrapi)ers 
whi(Oi  are  a  colorable  imitation  of  those  used  by 
plaintiff, — c.  //.,  where  the  color  of  the  pajx'i',  the 
words  used,  and  the  general  apjx'arauce  of  the 
labels  show  an  evident  design  to  give  a,  rep]'<>sen- 
tation  of  those  used  by  the  ])lrMUtilf,  he  v.ill  be 
enjoined  fi'om  so  doing,  and  tln^  fact  that  lie  puis 
his  own  name  on  tlu^  wrap]»ers,  cV'c,  as  the  manu- 
fa(tturer  of  the;  article,  will  not  i>revent  it  from 
being  an  inrringement  on  plaintilf's  tiadcmark. 
1872,  N.  Y.  t<u/,rr,ii('  CI.,  K  T..  Lea  v.  Wol",  13 
Ahh.  Pr.  uV.  ^'.)  38i):  ^^.  C.  modilied  in  another 
particular,  lo  Ahh.  Pr.  {N.  K)  1  ;  S.  C,  1  7\  ct-  C. 
020;  S.  C,  40  Horn.  Pr.  ira. 

^  3!)3.  The  name  of  the  manufactui'cr  oi'  seller 
of  goods  may  be  used  as  a  tradeinaik,  and  the 
adoption  of  the  same  name,  as  a  trademai-k  for 
goods  of  tlie  same  kind,  by  a  person  of  a  dillVrent 
name,  is  "jaracy  of  a  tiadcmaik."  A  slight 
change  in  tlie  name,  sucli  as  cutting  oif  the  iiual 
letter,  or  prefixing  "  \'an"'  or  "  \'on"  to  it,  so  long 
as  it  is  an  evident  imitation,  does  not  i)i<'vent  its 
use  from  being  pii'acy  of  a  tr:idemark.  1873,  *SV/- 
preme  CI.  of  Cat.,  Burke  (\  (Jassiu,   4.")    Citl.  407. 


%%i 


«T-f 


wvA 


Ui^ 


T 


134 


Imitatiox. 


^  394.  riiiintirs  article  was  labeled  "Wolfe's 
Aroniatie  Scliiedain  Scliiia])[)s.  A  superlative  tonic, 
diuretic,  aiiti-dyspeptic  and  invig'oratiiig  coi'dial."' 
I)pt'endant"s  article  was  labeled  "  Van  AVolf  s 
Aioiiial.'c  Schiedam  Sclinai)i)S.  A  superior  tonic, 
aiili-dysi)ex)tic  and  invigorating  cordial."  Defend- 
ant was  enjoined  from  using  '•  \'an  Wolf"  ov 
'•\Volfe,'"  and  from  using  liis  labels,  but  not  from 
using  the  woids  "Aromatic  tschieihim  tSclinapXis." 

i  oi).").  The  plaintilVs  were  in  the  hal)it  of  pack- 
ing their  cigars  in  small  wooden  boxes  containing 
Htl y  or  a  hundred  eacii,  and  in  order  to  distinguish 
them  tliey,  since  .\pril  23,  iSdO,  used  a  biand  con- 
sisting of  the  words  "•  Flor  Fina  l^iairie  Superior 
Tobac,"  stamped  on  the  boxes,  and  a  iigure  of  a 
hunter  smoking  a  cigar  ])y  the  rivei-  side.  The 
boxes  were  bound  with  daik-blue  pap(M'.  In  Fel)- 
ruary,  1872,  the  i)laintilt's  discoveied  that  the  defen- 
dants weje  manufacturing  cigars,  which  tiiey  ])ut 
in  boxes  l)earing  a  label,  showing  the  half  ligui'i^  of 
a  young  girl,  ami  the  words  "Flor  de  la  Pi'aiiie  " 
iindeinealh.  The  boxes  were  bound  with  yellow 
and  red  [laper,  and  had  the  word  "Piaiiie"  in  va]'i- 
ous  combinations  stam])ed  over  them,  and  also  the 
words  "  Fabrica  de  Tabacos  de  Sni)erior  de  la 
Vuelta  Abago  calledeCampobello,  ]lat(P,  Ilabana," 
There  was  no  evidence  that  any  person  had  been 
misled  by  the  brand,  but  the  plaintiit's  ])rod(iced 
witnesses  for  the  [)urpose  of  showing  that  the  jtub- 
li(^  might  be.  //</</,  that  tlie  court  will  not  giant 
an  injunctirmto  restrain  an  infringenuMit  of  a  Uade- 
niiirk  unless,  in  the  iirst  i)lace,  it  has  evidence  thai 
the  juiblic  have  been  actually  deceived,  or  is,  fiom 
inspection,  satisfied  that  ther(>  is  either  an  intention 


J:Ji| 


Imitation. 


K55 


todcH'oive  en'  Ji  piobabilhy  of  deoeption.  1874,  Via; 
Ok.  llair.s^  CL,  Cope  >\  Evans,  L.  li.  18  I^q.  KJS; 
S.  C,  *J0  L.  T  IL  {N.  K)  2i)2  ;  S.  C,  22  Ti:  A\ 
4.");}. 

v^  ;30G.  A  pai'ty  who,  while  he  has  avoided  liabil- 
ity for  the  ini'riimenient  of  another's  trademark, 
yet  has  adoptenl  a  course  calculated  to  secure  a  i)oi- 
tion  of  the  good  will  of  the  other  s  l)usiiiess  will 
not  be  regarded  with  favor  liy  a  court  of  e(]uity. 
1874,  X.  r.  CL  App.,  AV(^lfe  V.  Burke,  oO  xV.  Y. 
ll.'). 

§  307.  Before  tlie  t)wner  of  a  trademark  can  coll 
u[)0]i  tlie  courts,  lie  must  show  not  only  that  lie 
lias  a  clear  legal  right  to  the  trademark,  l)ut  that 
there  has  been  a  plain  violation  of  it ;  and  where  u 
\iolation  is  alleged,  the  true  iiKpiiry  is,  wherhei- 
the  mark  of  the  defendant  is  so  assimilated  to  that 
of  the  ])laintiif  as  to  decouve  purchasers.  And  it 
will  make  no  difference  whether  the  party  designed 
to  mislead  the  ])ul)lic.  l>ur  if  it  appears  that  the 
trademark  alleged  to  be;  imitated,  though  resem- 
bling thecomplainant's  in  some  lespecls,  would  not 
2)rol)ably  di'C(^ive  the  ordinary  mass  of  i>urcliasers, 
an  injunctioii  will  not  b(^  granted.  An  imitation  is 
colorable  and  will  be  enjoined,  whicli  lecpiires  a 
careful  insjtectiiui  t(j  distinguish  its  mark  and  a})- 
pearance  from  that  of  the  manufacturer  imitated. 
187."),  Siij)rrine  ('/,  of  Nor  in,  Vdroliiw,  Blackwell  r. 
Wright,  r.\  X.  ('.  :/k). 

g  :i!)8.  Plaintiif's  label  was  as  follows:  "  Genu- 
ine Durham  Smoking  'i'obacco,  manufactured  only 
l;y  W.  'V.  ]51ackwell,  (successor  to  .1.  K.  (}reen  tV. 
Co.)  Durham  N.  ('.."  with  a  ])icture  of  a  bull  in 
the  cen're  of  the  lal)el,  over  which  were  the  woids, 
"trademark."        Defendiint's   label  contauied  the 


npf* 


136 


Imitatiox. 


words,  "The  Ofigirml  Durham  Smoking  Tobacco, 
mnmil'actiu'ed  by  AV.  A.  Wrig'ht,"  above  whicli 
words  was  the  liead  of  a  bidl.  IRld^  ou  demurrer, 
tliat  I  lie  word  ''Durliani,"  the  name  of  tlie  town 
wliere  botli  parties  were  doing  business,  coukl  not  be 
exclusively  appropriated,  as  a  tradc^mark,  and  that 
the  defendant's  label  Avas  not  an  imitatkm  of  the 
plaintiifs.  Bill  dismissed,  1875,  Supreme  Ct.  (f 
North  Caroli/ta,  Blackwell  ?\  Wright,  73  N.  C. 
310  ;  but  see  ^  390. 

^  399.  If  it  appears  tliat  the  tradeniark,  alleged 
to  be  an  imitation,  though  in  s(mie  respects  resem- 
bling that  of  tlie  i)laiiitiir,  would  not  X'l'ubably  de- 
ceive the  ordinary  mass  of  i)urchasers,  an  injunc- 
tion will  not  be  granted,     /hid. 

§  400.  The  imitation  of  a  ti'ademark  to  render  a 
party  liable  for  an  infjingement  need  not  be  a  i)ro- 
cise  copy  of  the  original  ;  if  there  is  a  similarity  so 
that  the  communitv  would  be  likelv  to  be  deceived 
it  is  a  sullicient  infringement  of  the  right  of  prop- 
erty in  the  mark,  and  an  injun(;tion  is  the  sole  ade- 
quate remedy.  187."),  Connecticut  Supreme  Ct.^  be- 
fore all  the  justices,  Bradley  v,.  Norton,  33  Comi. 
157. 

§  401.  In  determining  the  question  of  infringe- 
ment, the  criterion  is  not  the  certainty  of  success 
in  misleading  the  public,  but,  as  was  said  by  Duku, 
J.,  in  the  Amoskeag  Manufacturing  CVmipany  t. 
S])eai',  its  probability  or  even  possibility.  1870,  N. 
Y.  Supreme  Ct.  S.  T.,  The  Amoskeag  Mauul'actur- 
ing  Company  v.  Garner,  4  Am.  Laio  Times  R.  ^N. 
S.)  170. 


See    Name  ;     Words  ;     Labels  ;     Devices  ; 
Paktxeusjiip  :    Signs. 


''.    :     ^i'i'l 


Imposition — Ixjunction. 


]37 


IMPOSITION. 


See  MiSKEPRESENTATION. 


INFANCY. 

See  §  218. 


INFRINGEMENT. 

See  Imitatiox;    Namh;    Words;    Letters; 
Numerals;  Larels  ;  Devices;  Pub- 

LICATIO.VS  ;     Pa  RTNEItSIIIP  ; 

Signs  ;    Buildings  ; 
&c.,  &c. 


INITIALS. 

See  Letters. 


INJUNCTION. 

§  410.  A  motion  was  made  on  behalf  of  tlie  X)lain- 
tiff  for  an  injunction  to  restrain  tlio  defendant  from 
making-  use  of  the  name  ''Great  Mo^'ul"  as  a  stiinii) 
upon  his  cards,   to  tlie  prejudice  oi'  the  plaintilf, 


m'.v 


wm^ 


138 


iN.irxcTioisr. 


upon  a  sn.a'ii'cst'on  tliat  the  plr.iiitift'  had  tlie  sole 
liiilit  t(j  tills  st:mi[»,  haviiiLC  approx)riated  it  to  hiiii- 
,s(>il'  (.'oiirorinable  to  the  (^Jiai'ter  granted  to  tlie  Card- 
makers'  Company  l)y  King  Charles  the  First.  Loi'd 
Haiidw  k  k  !•:  denied  the  iiijuuction,  and  said  he  knew 
of  no  instance  ol*  resi  raining  one  trader  from  making 
nse  of  the  same  maiiv  uitii  anotiier.  1742,  IJ/<//t 
CL  q/'Ck.,  Blancliard  r.  Hill,  2  At/ci/ia^,  48-1. 

^  411.  An  injunction  was  granted  to  restrain  a 
manufacturer  of  l^hicking  from  using  labels  in  imi- 
taticm  of  those  employed  by  the  plaintilf.  1810, 
Day  T.  l-)ay,  Ecltii  on  Injunctions^  1st  Am.  Ed. 
220". 

§  412.  A  court  of  equity  will  restrain  by  injunc- 
tion the  unauthorized  use  of  a  manufacturers'  or 
venders'  trademark.  184(5,  iT.  Y.  Court  of  Errors^ 
Taylor  i).  Carpenter,  11  Pa'uje  292;  «.  C,  2  ^and. 
Ch.  003. 

%A\\\.  An  injunction  to  restrain  a  def(3ndant 
from  using  tlie  particular  style  or  title  adopted  by 
the  plaintiir  will  not  be  granted  if  the  court  enter- 
tains the  slightest  ch)ubt  of  the  plaintilfs  i-ight  to 
sustain  his  title  at  law.  Hence,  a\  here  tlie  plain- 
tiff used  the  title  '' The  Limtlon  Manure  Company,'" 
and  the  defendants  used  the  title  "The  London 
Patent  Manure  C<mipany,"  and  also  published  cir- 
culars wliicli  were  clearly  fraudulent  imitations  ol' 
the  plain! iif's,  the  couit,  not  being  satislied  that 
there  had  been  so  long  a  user  by  the  plaintilf  as 
would  enabh^  him  to  sustain  an  action  at  law,  dis- 
solved an  Injunction  lestraining  the  deb'iuhmts 
from  using  said  title  and  publishing  said  circulars. 
1848,  T/Vr  V /uf h<-<  t/nr  s  Ct.,  rurser  v.  Brain,  17 
Load  J.  JL  C/i.  i  X.  *s'.)  J41. 

§  414.     The  rule  is  fully  settled  and  is  recognized 


Injunctiox. 


130 


in  nearly  all  the  cases,  that  in  suits  for  the  violation 
of  a  trademark  an  injujiction  is  never  to  he  granted 
in  the  lust  instance,  if  the  exclusive  title  of  the 
l)laintiir  is  denied,  unless  the  grounds  u]H)n  which 
it  is  deni«'d  are  nianilVstly  frivolous.  When  the 
title  is  disputed  the  course  is  to  let  the  motion  foi' 
an  injiincrion  stand  over  until  the  plaintilf  has  es- 
tablished his  legal  right  in  an  action  at  law.  Under 
the  provisions  of  the  Code  of  Procedun^  an  action 
at  law  Ctinnot  be  directed  to  enable  the  jjlaintilfs  to 
esta])lish  their  right,  but  a  preliminary  injunction 
can  be  dissolved  or  niodilied  until  tluur  legal  light 
is  established  by  a  verdict  of  a  jury  in  the  same 
suit.  18-11),  .V.  )■.  Siiixrior  CI.,  K  7'.,  Anioskeag 
Manufacturing  Co.  c.  iSjJcar,  :2  iSandJ'.  Sup.  CI.  ,nH). 

g  41i5.  The  i)ower  of  granting  an  injunction  to 
restrain  an  unauthorized  use  of  trademarks  ought 
to  be  exei'cised  with  great  caution,  so  as  not  to 
transgress  the  limits  that  a  just  regard  to  the  rights 
of  individuals  and  the  interests  of  the  public  nurst 
be  adndtted  to  presciibe.  It  is  not  to  be  exercised 
so  as  to  involve  a  violation  of  the  principles  upon 
which  it  is  founded  ;  it  is  not  to  be  exercised  so  as 
to  create  a  monopoly,  unjust  to  other  manufac- 
turei'S,  and  of  necessity  prejudicial  to  the  public. 
Ibid. 

§  41G.  In  granting  injunctions  to  inevent  the  in- 
fringement of  trademarks,  the  court  of  chancery 
exercises  its  jurisdiction  in  aid  of  courts  of  law  ;  /.  r., 
where  an  action  could  be  maintained  in  a  court  of 
law.  l)Ut  it  does  not  exercise  an  independent 
juiisdi<'ti(»n.  lb  nee,  wheie  the  legal  right  of  the 
jtlaintiir  is  not  clear,  an  injuiu-tion  will  be  refused 
until  he  has  establislied  his  right  in  an  action  at 
law.     The  cases  on  this  subject  re\  iewed  and  con- 


m 


'-■r 


ppp 


140 


Injuxctiox. 


sidered.     IS.jO,  liolls  CL.  Foot  v.  Lea,  13  J/lsh Eq. 
484. 

§  417.  A  party  is  not  entitled  to  an  injunction 
to  protect  liini  against  anotlier  person  wlio  lias  as- 
sunuid  the  same  label,  as  to  a  medicine  or  drug 
claimed  to  have  been  invented  by  the  comi)lainant, 
unless  his  right  be  clear.  Where  riglits  are  con- 
tested between  the  parties,  ohancery  will  not  inter- 
I'ei'e  and  enjoin  a  party  from  using  labels,  or  marks 
to  recommend  his  article,  though  it  may  to  some 
extent  be  substituted  for  that  of  the  plaintiff.  The 
matter  of  right  must  iirst  be  determined,  and  if 
it  be  controverted,  chancery  will  leave  the  parties 
to  their  remedy  at  law  ;  or,  at  least,  to  such  :i  nro 
ceeding  as  shall  X)resent  the  whole  merits  of  tht- 
controversy,  and  enable  the  court  to  decide  it.  Ac- 
cordingly, injunction  refused  where  there  was  a 
controversy  between  the  parties,  whether  both  had 
not  been  concerned  together  in  getting  np  the  med- 
icine in  question.  18.51,  U.  S.  Circuit  Ct.  lud., 
Colfeen  v.  Brunton,  5  McLean,  200. 

§  418.  An  injunction  ought  not  to  be  granted  at 
the  commencement  of  a  suit  brought  to  enjoin  the 
use  of  plaintiffs  trademark,  unless  the  legal  right 
of  plaintiff  and  the  violation  of  it  by  defendants  are 
very  clear.  18."5."),  N.  Y.  Common  Pleas,  0.  T., 
Merrimack  Manufacturing  Co.  ».  Garner,  4  E.  JJ. 
J^mitk,  'SS7;  S.  C,  2  Abb.  Pr.  ;318. 

§  419.  The  mere  affidavit  of  a  defendant,  without 
a  formal  answer,  will  not  be  sutlicieiit  to  bar  the 
equity  of  a  complaint  arising  out  of  the  facts  of  the 
bill.  18r)0,  Walton  v.  Crowley,  3  Bl.  Cir.  Ct.  44(.', 
{U.  S.  Cir.  Ct.  N.  r.). 

§  420.  If  the  indicia  or  signs  used  tend  to  show 
that  the  representations  emj)loyed  bear  such  Ji  re- 


^■n  .  mm 


IXJUXCTIO?f. 


141 


RfMTiblanoo  to  tho  ones  used  on  tho  plnintifrs  ailirln 
as  to  be  calculated  to  mislead  the  j)iil)lic  u'enerally 
wlio  iwo  pMrchasei's  of  the  aiticl(\  and  to  make  it 
jKiss  witji  them  for  the  one  sohl  by  t\u^  i)laintill', 
IIk;  Dai'tv  au'ii,i'ieved  will  be  allowed  an  iinimcfion, 
stayi;!!];  the  a.ii',u;Tession  niitil  the  merits  of  the  case 
can  be  ascei'taini'd  and  determinetl.     Ih/r/. 

^  421.  An  injnnction  onLi'ht  not  be  n'ranfed  at 
the  commencement  of  a  suit  broii,i;'ht  to  enjoin  tiio 
defendant  from  tlu^  use  of  plaint i(fs  tiademaik, 
nnless  plaintilfs  leual  ri,i2,'lit  and  tho  violation  of  it 
are  verj'  cletir.  IS.") 7,  IV.  F.  S/f/fcrlor  CI.  -S'.  7\, 
Fetridjie  r.  :Mei'chant,  4  AM.  Vi\  loO. 

>^  42:2.  The  court^,  in  considering:  the  pi'opriety 
of  enjoinin,':;' a  defendant,  pending  a  litigation,  who 
emi)loys  devices  calcnlated  and  intench^l  by  him  to 
secm-e  tlie  benelit  of  the  re])ntation  acqiiirc^l  by  the 
plainfiif,  will  not  feel  called  upon  to  Ik;  zealous  to 
aid  him  ])v  relined  distinctions,  so  that  lie  mav 
evade  the  letter  and  violate  the  scope  and  spirit  of 
tlie  adjudged  cases.  18157,  iV.  Y.  Superior  (U.  K 
T.,  Williams  r.  .lohn.son,  2  Bo.'^w.  1. 

>^  42o.  On  the  trial  of  the  action  it  Avas  left  to 
the  jury  to  say  whethei'  tlu^  defendant  had  s<^ld  any 
labels  printed  by  him,  knowing  such  labels  to  be 
copies  of  the  plaintiifs  ti-adeniark,  and  knowing 
that  they  Avere  to  lie  applied  to  bottles  containing 
spnrions  ean  do  Cologne.  I'lie  jury  found  a  Aerdict 
for  the  plaintilf,  Avith  nonnnal  damages.  The  bill, 
having  been  retained  until  after  the  trial  at  law, 
came  on  for  further  consideration,  //"/r/,  that  the 
defendant  should  be  perpetually  enjoined  from 
printing  or  stalling  labels  similar  to  those  nsed  by 
plaintiff  as  his  ti'ademark,  notAvithstanding  the 
possibility  that  some   labels   might  be  i^urchased 


142 


In'juxctiox. 


hona  fi<l(\  nnd  for  tlio  piir]K)SP  of  being  applied  to 
jirticlcs  of  phiiiitiirs  own  Tiijnmi':K'tin'e  from  wliicli 
liis  Inliels  luul  Ix'cn  lost.  ISjS.  V.  (\  Woorr.sfV., 
Fjiriiin  r.  Silvorloek,  4  /w/// ct* ./.  (*m(). 

i^  4'2-\.  Whei'e  Hi"  lidit  of  tli«-  plaintiff  to  the 
exclusive  use  of  liis  trademnrk  is  expressly  denied 
hy  the  defendant,  an  injiinetion  is  never  granted  in 
the  lii'st  instance,  until  ih.'  i)laintilf  has  established 
liis  legal  I'ight  to  it  byactiim.  1S.")1),  iV.  Y.  Siz/fremc 
CL,  k  T.,  Wolfe  "r.  (foulard,  18  J/o/p.  Ft. 
04. 

jj  42.").  The  principle  of  idl  the  cases  of  trade- 
niark  is,  that  if  jtei-sons  of  ordinary  nnderstanding 
pnrcha.sing  the  article  wonld  lie  placed  on  tlieir 
gnai''l,  and  wonld  be  led  to  inquire  Avhether  they 
were  being  d^^ceived  by  the  article  they  wei'e  pur- 
chasing, lliat  fact  is  sufficient  for  the  court  to 
refuse  its  interferenc(\  bS().'),  JV.  Y.  l^ujierlor  CL, 
a.  7\.  Swift  r.  J)ey,  4  RoJx^rt'^oiu  Oil. 

^  4'20,  A  ])arty  brought  an  action  for  damages 
for  an  allei>'ed  fraudulent  invasif)n  of  his  trademark 
labels.  'J'he  summons  contained  a  conclusion  for 
interdict.  The  piu'suer,  at  the  closing  of  the  I'eeord, 
moved  for  interim  interdict.  Ilclrl^  that  lie  was 
not  entitled  to  that  I'emedy  until  he  liad  established 
his  right  by  action.  1800,  Ct.  of  ^^ei^.^ion,  f^eoilancl. 
Green  v.  8iiei)herd,  88  ScQilit;h  Jf/riftf,  528. 

^  4'27.  An  injunction  will  be  granted  where  the 
design  of  the  defendant  to  defraud  the  plaintiff  is 
clear,  and  defendant  has  used  a  trademark  in  all 
respects  similar  to  plaintiff's  except  the  name  of 
the  manufacturer.  But  the  injunction  will  not  be 
made  to  include  the  manner  of  l)oxing  an  article, 
the  phraseology  of  cautions,  and  other  incidents 
which  are  to  be  considered  open  to  the  public.  1806, 


I.NMr\(T[<»N. 


143 


N.  Y.  Supreme  CL,  S.  7\,  (Jlllctt  r.  l-^stcrbi-ook.  -17 
Barb.  4;").'). 

V?  4'J8.  Tlic  ('()m])l;iiiu'i'  soiiu'lif  to  liinc  llic  ic- 
s])(>ii(l(Mif  infcrdictcd  JVoni  llir  ni;niiir:ictui'('  ;i!  Iiii 
wdi'lvs  (tl"  l)jir  iron  stiiiiiiicfl  oi-  luimdcd  *'<'o;its,'* 
with  :i  still'  iiiiMM'dinlcly  rollowin;;' — thus.  (\;:i(s  ■•■ — 
(til  Iho  i;T(HUid  tluit  Ihc  trade  oL'  tlie  complai;!;".'  in 
"  star  iron '"  was  injured  ))y  tlie  re^pondeii!  a';-;aMi- 
iiifj^  tlie  said  mark.  'JMie  Lord  Ordinary  J)as^.ed  tln^ 
note  ti»  try  tlie  (Question  lietweeii  the  parties  ;  ''Init 
liavin<i"re,uard  to  tiioooiu[)lainer's  price  list,  in  Avhicli 
file  ('oini>laiiitM-"s  iron  was  ent(M'ed  as  staiupi'd,  not 
simply  with  a  star,  Imt  as  •*  (rovan  ■"'•  "  the  L./vd 
Ordinary  did  not  think  that  the  use  on  tlie  [tart  of 
tlie  respondent  of  theniai"k  "Ooats"-"  was^.?- /V/r/r 
so  clear  an  adoption  of  a  tradeniark  Ijelonuin;;'  to 
the  coniplainer  as  to  entitle  him  to  an  interim  inter- 
dict. On  appeal,  tlie  Lords  Justices  said  that  the 
{piestion  whether  the  mark  of  a  star  us(Mi  by  the 
C()m])lainer  was  sncli  a  trademark  as  could  obtain  the 
]irotectionof  law,  v/as  a  delicate  one,  on  which  they 
would  at  that  tinu^  give  no  o}»iiiion.  lint  as  it  was 
clear  that  the  complainer  had  used  the  mai'k  for 
some  time  ;  that  it  had  some  signification  in  the 
mai'ket  ;  that  no  one  else  had  nsed  it  ;  that  the  use 
of  it  by  the  respondent  was  recent,  sudden  and  un- 
explained ;  that  it  was  veiy  like  a  device  on  the 
part  of  the  respondent  of  an  unf-dr  kind  to  make 
use  of  a  trademark  used  by  a  i-ival,  to  the  injury  of 
that  rival  ;  and  as  no  injuiy  could  arise  to  the  I'e- 
spondent  by  granting  interim  interdict,  but  very 
considerable  injury  might  resnlt  to  the  complainer 
by  refusal  of  it,  the  true  equity  of  the  case  demand- 
ed that  protection  should  be  given  in  the  meantime. 


i;-i ''  •' 


IMAGE  EVALUATION 
TEST  TARGET  (MT-3) 


1.0 


I.I 


ISO 


1^  1^ 

1^    12.2 


us 


140 


I 


2.0 


1.25    |U      1.6 

< 

6"     

► 

0% 


<%^"^  >^ 


fi: 


/ 


Photographic 

Sciences 

Corporation 


23  WIST  MAIN  STRIET 

WEBSTM.N.Y.  US80 

(716)672-4303 


«• 


•^ 


144 


Ix.irxcTiox, 


1807,  Cll.  of  ,<?".?.? /o;/,  ,V'v>/ 


DixDii 


Juc] 


vSOTl, 


;} 


S^v>// 


/.s//  />.  y?.  18S. 


j:?  4'29.  Where  flici'o  wns  a  qnostion  as  to  wliat 
wasting  natnro  and  e.Toct- oC  an  arrangemont  made 
bcrwcen  the  ])laintil1"  and  K.  II.,  Jr.,  and  whethei'  it 
vested  in  the  lattei'  the  ii;i:ht  to  nsr;  the  ri'achMiiark, 
and  to  transfer  sn<ih  riL;'ht  to  othei-s  and  that  ques- 
tion was  not  (Mitirely  free  from  donl)t,  an  injunction 
l)ri())' to  the  ti'ial  ol'  th(^  cause  to  restrain  liis  _i;Tan- 
tees  fiom  usin,<r  the  same  was  not  jL'rant<'d  ;  it 
appearing  tlmt  I  hey  were  of  .snflicient  ability  to 
)v:!si)ond  to  any  damages  the  ])laintiir  might  I'e- 
('(,vei.  18(>7,  J\\  Y.  i^irprriuc  (H.  (L  71,  Howe /•. 
'  Machine  Co.,  no  Barh.  23(5. 

.;  i;>().  In  matters  of  trademark,  in  order  to  au- 
thorize tlio  inteiposilion  of  a  court  of  equity,  the 
title  to  the  nse  and  enjoyment  must  be  clear  and 
unquestionable.  J 871,  Supreme  CI.  of  (Jeore/i  (,  Ki- 
lls V.  Z(nlin,  A2  (reor(fl<i,  01. 

i$  4;}].  The  plaintilfs  alleged  that  they  had  used 
their  trademark  for  whiskey  with  the  words  "  Sil- 
ver Gi'ove"  therecm  since  1807,  and  on  May  MO, 
1871,  h?tters  jjatent  were  gi-anted  to  them  by  the 
I'luted  States,  seeming  to  them  the  us(5  of  said 
trademiU'k.  Defendant  claimed  to  liave  a])p]'0]>ii- 
ated  tluMvords  "Silver  Brook"  as  ap])lied  to  ]y<> 
whiskey  in  1870,  and  ho  had  obtained  a  co[)yi'ig!it 
under  tlu^  laws  of  the  United  States  for  a  label  c;»ii- 
taining  tlu;  words  "Silvei-  lirook  Pure  Ilye  Whis- 
key." I)el'(»ndant  swore  jjositivel}'  that  jn'ior  to 
liis  own  approjji'iation  of  the  words  Ik^  jnul  nev<'r 
heard  of  the  words  '*  Silver  drove"  in  conntTtion 
with  a  trademark  for  wliiskey,  and  he  produced 
afiidavits  from  a  number  of  dealers  that  thej'  nev(M' 
kiunv  or  heard  of  any  '"Silver  Giove"  whiskey  ex- 


ti'. 


IxjrxcTiox. 


145 


oept  that  sold  by  tlie  defendunt.  PlnintifPs  prodiirod 
no  aHidavits  fo  show  thiit  their  whiskoy  w:is  known 
iu  t\\('  market  and  to  tlx;  trndc  as  '•Silver  (Jiovc," 
except  the  ailiihivit  of  their  hookktv^jHM'  that  it  was 
rliaru'ed  as  siicii  upon  their  hooks.  Tlu;  two  Irade- 
ni:irks  were  dissiinihir  ;  ouch  contained  tlie  Uiune  of 
the  owner  with  his  place  of  business:  th:it  of  tlu^ 
l)l:iintiirs  was  smnll  and  perfectly  plnin,  whilst  <le- 
lenchmt's  w;is  much  Ijii'ti'er,  coloi-ed  nn<l  highly 
ornnnientcd  ;  the  only  point  of  similarity  was  tiie 
use  of  the  words  ''Silver  drove."  On  a  nK»tion  to 
continue  a  special  injunction  restrainin.a;  d<'fen(hint 
from  the  use  of  the  words  '*  Silver  (xrovt*''  on  liis 
whiskey:  /A'7'/,  That  the  injunction  should  h(}  dis- 
solved. That  wliei'o  a  party  claims  to  have  nnjently 
adopted  a  tiademark,  comprised  in  ])[irt  f>f  certain 
words  which  do  not  in  tlnMuselves  designate  the 
origin  or  ownership  of  the  merchandise,  and  which 
lias  not  been  used  lonu'  enough  to  be  known  in  the 
tra<h%  and  another  ]>arty  sliortly  after,  in  «miir.'' 
ignorance  of  the  fact,  and  witlumt  any  apparent 
design  of  hnitation,  uses  the  same  words  as  part  of 
his  trademark,  a  court  of  ecpiity  will  not  interfere 
in  a  summary  way  bv  injunction,  Imt  will  remit  the 
parties  to  a  court  of  law,  there  to  settle  the  ques- 
tion of  the  original  appropriation  of  tlie  tradiMuark 
by  the  verdict  of  a  juiy.  Equity  will  only  inttn-fere 
when  a  clear  case  of  piracy  is  made  out.  Let  the 
l)lainti(f  establish  his  right  at  law,  and  he  may  then 
be  entitled  to  the  inteiposition  of  the  equity  powers 
of  the  court.  1871,  r/.  of  Com.  Pleas,  Phil., 
Pf'iin..,  Seltzer  v.  Powell,  8  Phila.  200. 

§  4133,     On   an   aiq^lication   to  restrain    the   un- 
authorized use  of  a  lirm  name,  it  is  not  necessaiy 
to  show  that  actual  damage  or  loss  lias  accrued  to 
10 


'1 

wr'^ 

1  "'.^i 

i 

'      sHfift, 

1 

'  ^n 

14C 


Injunctiox. 


;■.!• 


4/ 


ii 


H 


tlu'   i)laintiffs.      1871,  X  F.  St/prr/or  67.,   X    7'., 
lircvcs  r.  Denicke,  12  A/jh.  Pr.  {X.  S.)  02. 

j^  A'X\.  The  i)laintilf  claimed  to  b(^  exclusively 
}U)sse.sse(l  of  and  entitled  to  the  recipe  i'oi'  niakiiiij: 
an  ointment  called  'M)r.  .Fohnson'fs  oi'  Sii"vl<^>to!r.s 
(lolden  Oinrinent,"  or  "  Sin<j:leton"s  Gold.Mi  Kye 
Ointnient,"  known  in  the  tiade  and  to  the  public 
by  the  nann;  of  ''The  (to1(Umi  Ointment."  The 
defendant  had  for  fsome  time  sold  a  preparation 
called  "  J)r.  Rooke's  Golden  Ointment."  Suit  was 
brought  to  I'estrain  the  defendant  from  sellini;'  any 
ointment  under  the  name  used  by  him,  on  tlu^ 
ground  that  the  i)laintiit'  luid  an  exclusive  light  to 
the  use  of  the  wind  "Golden"  as  apx)lied  to  oint- 
ment. Tlie  right  to  the  description  "  (Jolden 
Ointment"  was  the  subject  of  litigation  in  18:'2, 
Avhen  the  i»laintilf  obtained  an  injunction,  llihl, 
by  the  Vice  Chancellor,  that,  ccmsidering  the  exist- 
inu'  state  of  the  authorities,  he  was  not  at  liberty  to 
grant  an  interlocutory  injunction,  bnt  must  order 
tlie  motion  to  stand  over  to  the  liearing  (»f  the  cause. 
Y'lir  Ch.  Wickenfi^  Green  ii.  llooke,  Wtclilij  Xotes, 
1872,  p.  40. 

J^  4:i4.  A  i)reliminjiry  injunction  is  grantable, 
wlieie,  upon  appearance  of  defendant  to  notice,  lie 
contests  plaintilfs  title,  withont  successfully  re- 
butting tlie  allegation  of  infringement.  1872.  I  J. 
^'.  (^ir.  CI.,  Va.,  Blackwell  v.  Armistead,  H  Am. 
Lam  Times,  85. 

>^  4;io.  Ileasonable  ajiprehension  of  injury  from 
tlie  proceedings  complained  of  is  sufficient  ground 
for  an  application  for  interdict,  and  it  is  not  neces- 
sary to  prove  actual  injury  sustained.  187;>,  Ct.  ((f 
Sc6-sio/i,  Singer  Manufacturing  Co.  v.  Kimball,  10 
Scottlsli  L.  Ji.  173;  S.  C,  45  Scott Uh  Jurlat,  201. 


Intknt. 


147 


Z 


^  toO.  It  is  always  a  matter  of  disrrotion  with 
tlic  court  to  issue  an  injunction  or  not,  ni)on  a  (".is<' 
niade  in  a  tradeinai'k  suit.  187."),  (7.  *V.  ('//•.  (7.. 
III.,  Tuckoi'  Mannra<'tui'in,i>-  L\).  v\  Boyington. 
J)  O/;*.  (idz.  (  U.  K  PaUni  o}fi('('\  ^m. 

i:  A'M.  In  (lett^iniining  whether  an  injunction 
should  be  granted,  some  regard  slionld  be  had  to 
tlu'  nature  and  ext<Mit  of  the  injury  wliich  the 
l)laint'(V  would  sulVei-  if  the  injunction  be  withheld, 
and  also  to  the  consequences  to  the  defendants  if  it 
be  gi-anted.  1870,  N.  l\  Supreme  CY.,  N.  7'.. 
Amei-ican  (Jiocer  Pul)lishing  Association  v.  Grocer 
Publishing  C^>.,  51  ILno.  Pr.  402. 

^  4H8.  When  the  answer  and  affidavits  on  be- 
lialf  of  the  defendants  so  thoroughly  and  completely 
deny  the  winkle  equity  of  the  i)laintiirs'  cast-  as 
stated  in  their  complaint  and  affidavits,  and  so 
thoi'oughly  rebut  all  charges  of  evil  intent  and  ini- 
projx'r  design,  as  to  rencU'r  it  inii)()ssibl(?  for  tin; 
court  to  say,  upcui  a  mere  motion,  that  defendants 
have  injured  the  plaintiirs,  or  that  the  use  of  the 
mark  is  calculated  to  mislead  the  ])ul)lic,  an  injunc- 
tion peiulcnU'.  lite  will  not  l)e  granted.  187(5,  N.  Y. 
Supreme  (7.,  N.  T.,  Decker  v.  Decker,  C)2  IIow.  Pr. 
218. 

See  also  Name  ;  I.mitatiox. 


% 


\m 


■  '■•  ■"■*■  . 


i 


.'f 


^■- 


INTENT. 


m 


§  44.').  The  court  will  grant  a  perpetual  injunc- 
tion against  the  use,  by  one  tradesman,  of  tlie 
trademarks  of  another,  although  such  marks  have 
been  so  used  in  ignonince  of  their  being  any  per- 


1 

1  ■: 

i 

11^ 


•fn 


I" 

'  .• 

■   i 

'i  . 

.  1 

•i; 

V'' 

■i 

;. 

^1^ 


if 


MS 


Intent. 


son's  properly,  nnd  under  tlio  belief  tliat  llioy  wovo 
iiiciv  tccliiiiciil  (criiis.  ISI'S,  Lord  Cli.  CorrKNiiA.M, 
Milliiiuloii  r.  Fox,  ;}  Mt/Jne&  Cr.  :};W. 

^*  -l-Kt.  ('use  Tor  ''  wron<i,rully  and  rrimdulcnily  "' 
sfniMpiiiu:  l):ns  of  iron  made  by  llie  defendants, 
wifli  a,  sl;nn[>  resenibljni^"  one  nsed  by  tlie  phiintiif, 
which  file  (h'fenchmfs  knew,  jind  intended  to  b(!  in 
imitntion  f»f  the  phuniilf's,  and  wiucli  was  iis»>d  by 
t!(e  defendants  in  or(hM'  to  denote  that  their  iron 
w:is  nunh'  by  the  phnntilf  ;  and  for  knowingly,  t^lc. 
sellinii'  Hie  ii'on  so  niai'ked  as  and  for  the  iihiintilV  s 
iron.  I'>l(/,  tlijit  njxin  (his  declaratiijn  the  plainiilf 
was  bound  toestablisii  tlie  (h^fendants'  inttMition  to 
d(H'eiv<!.  And  tiiere  beinu;  no  evidence  at  tlie  trial, 
except  from  tlie  alleii-<»d  i'es(;nd)lance  in  the  marks 
nsed,  that  the  defendants  had  ever  I'epresenled 
th(3  iron  sold  bv  them  to  be  iron  niannfactuied  l^y 
tlie  ]»laintiiV  :  I  hit/,  that  it  was  properly  left  to  the 
jnry  to  say,  first,  whether  there  was  in  fart  so  (ilose 
a  resemblance  in  the  marks  nsed  as  wonld  d(M'eive 
pei'sons  of  ordinary  skill;  and,  secondly,  wlietlier 
there  was  any  intention  on  the  part  of  the  (U^fen- 
dants  to  deciMve  pmchasers  a.,  t  ^et  possession  of 
the  market  in  the  room  of  the  plaintiff.  1842,  (7. 
of  Co/H.  /Vcv^s*,  Crawshay  v.  Thompson,  4  31.  ct  (>. 
3:)7;  S.  C,  11  Law  Jour.  C.  P.  301. 

§447.  It  is  no  answer  that  the  maker  of  the 
spui'ions  iroods,  or  the  jt)bber  who  sells  them  to  the 
retailers,  inl'orms  those  who  ])nrchase  that  the  arii 
cle  is  spr.rions,  or  an  iinitati(m.  184,"),  Vice;  Cli. 
Sandfoiiu,  ('oats  t\  J[olbrook,  2  Suik//'.  Oh.  58(5  ; 
S.  C,  H  iY.    y.  Lcf/.  ()h,<i.  404. 

^  448.  AN'liei-e  one  intentionally  uses  or  closely  im- 
itates anotlier's  trademarks  cm  merchandise  oi'  man- 
ufactures, the  law  presumes  it  to  have  been  done 


m 


Intent. 


149 


for  tlie  fraiiduloiit  piiij^osos  of  iiidiK'iiiL!:  thn  public 
or  tlio:so  dealing  in  the  arlicle  to  Ix'Iicv*!  thai  tlie 
goods  are  those  made  or  sold  1>y  the  lathM',  and  of 
.supplantini^' him  in  the  good  \ill  of  his  trade  or 
business.  184(5,  IV.  T.  (V.  o/'  AV/o/.v,  'I^iylor  t\ 
Ctirpeiitei-,    II   P<(f'f/(;  i.H)L>  ;  S.  C.,  2  ^un<lf.  C/i.  OOii. 

>:;  44!).  It  would  seem  that  an  intentiotial  fraud  by 
tile  defendant  is  not  ne<'essary  to  entitle  Ih*!  ownei'of 
a  liademark  to  i)roteetion,  but  tliat  wheiv  tlu^  same 
inailv  or  label  is  used,  which  recommends  thearticli' 
to  the  public  by  the  established  re])Utation  of 
another,  who  sells  a  similar  article,  and  the  spinious 
article  cannot  be  distinguished  from  the  genuine 
<me,  an  injunction  will  be  granted,  although  there 
was  no  intentional  fraud.  J84'J,  U.  S.  i'in-ii'd  Vt., 
Iiul.^  Colfeen  (\  lirunton,  4  McLvaii,  HIO. 

^  4.)(>  The  atlixing  to  his  own  goods  by  any  [K'r- 
son  of  the  name  or  style  of  another  person,  liiin  or 
company  known  to  be  the  manufacturers  of  similar 
goods,  although  othei'  particulars  contained  in  I  he 
I'eal  ti-Jidemark  of  tliose  manufactures  may  l)e 
A\hoily  omitted,  is,  generally  si»eaking,  conclusive 
evidence  of  a  fraudulent  intent  ;  but  even  where  no 
fraud  can  be  justly  imi)Uted,  wheie  the  use  of  tlu; 
name  or  style  originated  in  mistake  and  not  in  tie- 
sign,  although  the  party  may  be  exemiited  from 
damages  and  costs,  the  continuance  of  the  use  may 
l)e  justly  le strained,  since  it  involves  a  vi(jlatiun  of 
a.  right  of  property  that  if  persisted  in,  with  a 
knowledge  of  the  fact,  would  be  fraudulent.  1840, 
J'.  }'.  JS'if/wn'or  (7.,  >K  7'.,  Amoskeag  Manufactur- 
ing Co.  v.  Spear,  2  ^aiulf.  ^^ffp.  VL  ADO. 

^  4.')1.  The  original  fraud  in  the  ]n'ei)aiation  of 
counterfeit  trademarks  does  not  attach  itself  to  the 
goods  in  the  hands  of  owners  ignorant  of  the  of 


if 

!.■ 

-'lis 


M 


'   i' 


,  i 


l.W 


IVTENT. 


I 


fonsH,  and  fasten  u\)im  them  tlio  penalties  of  a 
wi'on^-  ol"  wliicli  tliey  are  innoeent.  1840,  SV.  V. 
Sfipcrior  ('/.,   (}.  T..   lluddei-ow  c.   Huntington,  '} 

■j  4."i2.  Tlie  inventor  of  an  uni>ateiited  medicine 
lias  no  exclusive  I'ight  to  make  and  vend  the  same, 
but  if  otJiers  make  and  vend  it,  tliev  have  no  liulit 
to  vend  it  as  the  niannfactnie  of  the  inventoi,  nor 
to  adopt  his  lahel  or  trademark,  nor  one  so  like  his 
as  to  h^ad  the  i)ul)li(r  to  sni)pose  the  article  lo  which 
it  is  aiiixed  is  the  manufactui-eof  the  inventor  ;  and 
theyaie  equally  liable  for  tije  damaii'e  wlielher  such 
li-ademark  lie  ado])ted  by  I'raud  or  mistake.  IH.IO, 
Siiprciiic  Cf.  of  Jl/iode  J.sl((/ic/,  Davis  i\  Kendall,  2 
JL  I.  ;-)()(). 

^  4.")'}.  In  trademark  cases  it  is  not  necessary  or 
usual  for  the  conrt  to  relv  solely  on  the  statements 
of  the  defendant,  in  oidei'  to  discover  what  his  i)ur- 
])ose  or  intent  may  have  been.  AVhere  there  is  a 
sirong  resemblance  in  mattei*,  color  and  ai'iang*'- 
nient,  the  court  will  presume  that  it  is  not  fortui- 
tous, but  that  it  was  intentional,  with  a  view  to 
mislead  i)ui'chasers.  JS.")!},  Yive  Ch.  Wood's  CI., 
Edelsten  t\  Mck,  11  llarc,  78;  S.  C,  18  Jurist,  7; 
)<.  C,  23  Eii(/.  Law  &  Eq.  51. 

5^  4.")4.  Kesemblanceisti  circumstance  of  primaiy 
importance  for  the  court  to  consider,  because,  if  the 
conit  iind  that  there  is  no  I'eason  for  the  resem- 
blance, except  for  the  pui'pose  of  mi.vleadiug,  it 
will  iid'er  that  the  resemblan 'e  was  adopted  fo:'  the 
])Ui'l)ose  of  mishnuiing'.  J8.-)4,  V.  C.  Wood  s  Cf., 
Taylor  /'.  Taylor,  23  Lo/r  J.  (^.Y.  K)  C/ia/,-c.  2.V3 ;  fc. 
C*  23  E/if/.  ^Laio  <£•  Ef/.  281. 

^  Ai)o.  Held.,  that  a  defendant  could  not  escajie 
liis  liability  by  cautioning  Ids  shopmen  to  explain 


IXTENT. 


151 


to  piivcluisors  tliJit  his  ;iiti<'lo  \v;is  not  the  saino  as 
the  |)liiiiitilVs',  hccatiM'  he  could  not  s^'ciire  that 
retail  dealers  ])ni'<'hasin,u'  rroiii  him  would  uive  tlici 
same  inloriiiation  to  theii"  «Mistoin('rs.  18.').">,  W  ('. 
Woor/'s  ('(..  ('happen  i\  Davidson,  2 /u/// tt- ./.  \'>'.\\ 
S.  ('..  C/l.  ('/.  of  A/ijirdl,  8  l)r(i.   M.  d'(j'.  1. 

^  AM).  To  ien(h'i'  a  ])erson  liahle  for  misi'<'])re- 
sentalions  as  to  the  ci'edir  of  anoth'r,  by  tlie  use  ol' 
false  siuiis  or  trademarks,  the  siu'ii  or  mark  must 
))e  jalse  in  fact,  so  known  to  the  ])arty  iisin.u'  it,  and 
have  l)i'en  u:;ed  with  the  intention  to  dcc'.'ive,  and 
of  such  a  character  as  would  niish'ada  ix'rson  usiiii^ 
ordinal y  <'aution.  An  injunction  may  l)e  i)ro[)er, 
without  any  other  ])roof  (tf  tlie  knowh»d,ii"e  (\f 
the  falsify  or  of  the  intention  to  deceive,  than  tliat 
wh'wli  arises  from  the  fact  tliat  there  is  falsity,  and 
that  the  effect  will  necessarily  be  to  deceive.  lS.->7, 
j\\  y.  Siiprriiic  Cl.^  .V.  7^,,  Peterson  /".  llumplnvy, 
4  Ahb.  Pr.  :51)4. 

J;  457.  In  Older  to  establish  a  case  for  relief  it  is 
not  necessary  to  show  a  '"fraudulent  ])uri)ose  "  in 
the  defendant,  but  it  is  suHicient  if  the  similarity 
of  title  be  such  as  to  have  led,  and  to  be  likely  to 
lead,  to  mistakes.  IS.li),  Nice  Ch.  Stiakt,  Clement 
r.  >raddick.  H  .////•/>/ (X   .s'.  t  ;V.):> ;  S.  C,  I  O'i/.  t)8. 

<i  4.-)8,  Tiie(U^fendanl  was  ordei-ed  by  C  to  man- 
ufacture an  article  and  stamp  it  with  the  plaintilf's 
tiademaik  {/'.  c.,  Collins  &  Co..  llai'tfoi'd  i.  Thede- 
fendunt  caused  tiie  article  to  be  manufactured,  and 
a(hnitted  that  he  had  lieaid  of  the  jjlaintiirs  com- 
pany but  had  had  no  absolute  knowI(^d<:;e  of  it, 
J/i /(/,  that  the  defendant  must  submit  to  a  per])et- 
iial  injunction  and  ])ay  the  costs.  18.V.),  Viec  Ch. 
Khuhrslefffi  CY.,  Collins  Co.  'c.  AValker,  7  Wccliif 
Jl.  222  ;  and  see  §  177. 


^ 


152 


Ixti:nt. 


, .  ■  it  ' 


■ij^^ 


i 

'I 


I 

1 


! 


ji  4r)l).  ^nnhlr.  A  person  acliiii;-  iiUKXHMitly  is 
liiiMc,  ill  :i,  courl of  ('(piity,  to  an  injiiiiclioii  I'loin 
nsitiu,-  Mnotlicr  ])('i',s()n"s  (nidcinark  and  to  an  ac- 
coinil.  18(51,  Qf/rr/i's'  />V//r//,  J)ixoii  r.  Fawcus,  7 
.A/v/.v/  (X.  X. )  8:)r> ;  S.  C,  :5()  /v^^/o  ./o/^/-.  {(J.  B.)  i;37  ; 
S.  v.,  9  IIVr/.7//  /.'.  414  ;  S.  C,  :5  y>(//«  7V///f  *•  (iT.  JS'.) 

co:'.;  s.  C,  :rAV.  d-  AV.  n:}?. 

^400.  Tli«>  lii^lit  of  i)IaiiitilFs  to  maintain  an  ac- 
tion for  a  violation  of  a  tradcniaik  does  not  depend 
in  any  degi-ee  nixni  the  defendants'  intention  to 
violate  it.  It  is  enough  that  the  defendants  liave 
violated  the  light.  18(51,  ^Y.  )'.  Co///.  Picas,  G.  T., 
Dale  r.  Sinilhson,  1:2  .!///>.  I'r.  '2:)7. 

^  4(')\.  If  it  be  found  that  there  has  been  a  col- 
orable imitation  of  a  lra<hMiiark.  it  follows  that  the 
person  making  it  intended  to  imilate  the  genuine 
trademark  belonging  to  some  individual,  thongh 
he  mav  not  have  known  liis  name  or  anvthing 
about  the  person  to  whom  it  belonged.  18(5:2,  Jiolls 
CL,  Cartier  c.  Carlile,  ;]l  Bcac.  21)2  ;  S.  C,  iiJiirisl 

{K.  X.)  18; J. 

^  4(52.  A  defendant  will  be  perpetually  enjoined 
from,  and  is  liable  in  equity  to  account  for  the 
]>rolits  made  by,  the  nser  of  a  i)laintiirs  trademark, 
though  at  the  time  of  the  user  he  may  have  been 
ignorant  of  the  rights  and  of  the  existence  of  the 
l)laintiif.     J  hid. 

%  4(53.  The  want  of  any  knowledge  or  intent  on 
th(»  part  of  the  defen<lant  to  injure  or  defraud  the 
})laintHf  is  material  to  the  question  of  costs.  18(32, 
JS.  Y.  Sitperior  CL,  G.  7\,  Uiulhon  v.  Lindo,  I) 
Jios'ir.  COo. 

g  404.  It  is  settled  law  that  if  A  has  acquired 
property  in  a  trademark,  which  is  afterwards  adop- 
ted and  nsed  by  B  in  ignorance  of  A's  right,  A  is 


Intkxt. 


V>'S 


('iifitlcMl  fo  fin  injunction,  but  \U){  to  nn  account  of 
jd'olits  or  coiupcMisution,  cxccjjt  in  ri'spcct  of  auy 
us(»  l)y  15  after  li(3  b<M'aiii<'  awiii'i;  of  the  ]>rior  o\vn<'r- 
sliip.  1,S('»;).  IxJ'orc  ilic  Ld .  C/i.  on  <ijii:<(i/,  Ivlclsten 
/'.  Kdclslcu,  !)  Jiiri.st  iX.  i<.)Al\)\  8.  ('.,  1  ])<(;. 
./.  it-  .s'.  ISA  :  S.  ('.,  1 1  Wnkli/  lx\  ;i-i8  :  S.  ('.,  I  Xao 
R.  :5()():  S.  ('.,7  I. 'Lie  Times  Ji.  (X.  N.  i  TC.S. 

^j  \('u).  At  law  the  i)i'o|K>r  remedy  is  by  an  action 
on  the  case,  and  pi'oof  of  i'linuhdeiit  user  is  of  the 
essence  of  the  Jiction,  but  to  sustain  a  bill  in  a  court 
of  eijinty,  it  is  not  necessaiy  to  pi'ove  fi-aud,  or  that 
th(^  credit  of  the  plaintilf  was  injured  by  the  sale 
of  an  iid'erior  articl<' ;  tlie  injury  don<;  to  the 
pliiintilf  by  loss  oi'  custom  is  sutlicient  to  sup[»oit 
his  tiil(»  to  relief.      J  hid. 

%  4(5(5.  It  is  not  necessary  to  prove  in  trademark 
cases  that  tin;  respondc-nt  was  aware  that  the  mai'k 
used  was  a  tnidemaik.  18(5:>.  Lord  Ch.  Bu.dv, 
Kinnhan  r.  liolton,  b")  fri.sh  (J h.  T."). 

>;  4(57.  The  jui'isdii  tion  of  the  court  of  chancery 
in  th(^  pi'otectiou  of  trach'mai'Ivs  rests  on  property, 
and  fraud  in  the  defendant  is  not  nec(^ssary  f(»r  the 
exercise  of  that  jurisdiction.  The  i)laiulilf  is  en- 
titled to  relief,  even  if  the  defendant  can  jirove  that 
he  acted  innocentlv  and  without  anv  knowledne  of 
the  riiiiit  of  the  defendant.  Ohi/cr.  JSO-l.  Lord 
Ch.  Westiumiy,  Hall  v.  Barrows,  0  /..  T.  JL  {X. 
>S'.)  5(51  ;  S.  (J.,  l^WetJch/  J}.  '.\'22\  S.  C,  10  Jurist 
{N.  K)  a") ;  S.  C,  3IJ  Lfiw  J.  It.  {N.  S.)  Oh.  204. 

^  4(58.  Injunction  granted  to  restiain  the  use  oE 
the  ])laintiirs  trademark  by  the  defendants,  th(»ugli 
the  .scienter  was  not  proved,  but  an  account  (»f 
]>rofits  refused  on  the  ground  of  delay  by  the  plain- 
tilF  in  commencing  the  siut.  The  defendants  given 
a  month's  time  to  discontinue  the  mark,  but  ordered 


!'  •.: 


I      f 


iiHi' 


.  i^\ 


?• 


154 


IXTEXT. 


:'    h 


to  i»;iy  ill!  Ihf  costs.     ISCu.  V.  O.  WoofV s  CI.,  lljir- 
]is(ni   r.  T.-iylor,    II  .Inrisl  tX  ,s'.)  4U8 ;    S.  C,    12 

,^'  4()1).  It  (Iocs  not  siu'iiily,  I'or  tlio  piii-posc  ol" 
llic  i)l;iijilili"s  liulil  to  rclicl',  whether  tli«  dcrciKhiiit 
liiis  jict<'(l  with  ii  riMiidiilciit  intciiiioii  or  not  :  it  is 
ciioiiu'h  if.  even  wilhont  nny  nnl'iiii'  intention,  he 
li:is  (lone  tliiil  whi<'h  is  cnlcnluted  to  inish'jid  the 
])iil)lic.  1S(5."),  V.  ('.  K'niihrxltif x  (7,,  Ulenny  r. 
Smith,  1   Dr.  ct-  S,u.  47('. ;   S.  C,  Jl  Jtni.sf  {\.  X. ) 

)t ;  S.  C,  J;3  L.  T.  11.  (X  aS'.)  11 ;  S.  C,  0  ^no  It. 


).). 


^  47(».  Tlie  nse  of  the  trademsirk  oi  smother 
niiinnnictnrer,  wliethcr  (huu?  .svimtcr  or  not,  is  nii 
interrereiic(»  with  liis  hnsincss  wliich  tlie  conrt  of 
chiuicery  will  inferi)ose  to  pi  event,  on  the  ground 
that  the  derendant  is  endeavoring;  fo  pass  oil'  the 
goods  of  his  own,  or  Sv'iniehody  cls(^\s  niannfactnrc. 
as  tlie  nianufactnre  of  the  i>lainti(l'.  18()(),  \ .  Ch. 
AVooi),  Ainsworth  c.  Walinsley,  Laii^  It.  1  />'«/•  ^'>\^\ 
S.  C,  12  .////•/.v/  (.y.  N. )  20.") ;  S.  C.,  14  Wcclili/Jt.  \)m  ; 
S.  C,  14  Jmh)  Tinir-s  It.  {JS\  H.)  220;  S.  C,  :{.") 
X(/?r./.  yj'.  (X.  X)  (7/.  ;5:)2. 

jf  471.  It  is  n(>t  neces.sary  to  prove  intentional 
I'rand.  If  the  inntation  is  calculated  to  mislead, 
the  intention  to  deceive  is  to  he  inferred  therefrom. 
18(5U,  Siii>i-<iiu:  CI.  of  Missouri,  Filley  v.  Fassett,  44 
Mo.  1(58. 

$j  472.  W's  manauer,  without  the  personal  knowl- 
edge of  \V,  alhxi^d  tickets  with  Ts  name  i)iinted 
thereon  to  certain  goods  of  inferior  (pudity  to  T"s, 
and  made  bv  another  mannfactuier.  On  Ts  (xmi- 
plaining  of  this  W  ofl'ered  to  give  an  iindertakinju- 
that  he  would  not  use  sucli  tickets  a 
l)ay  a  certain  sum,  but  declined  to  make  a  public 


and  to 


\m 


mm 


I\Ti:\T. 


1;).) 


jidinissiou  fliiir  he  Imd  used  the  llclst'fs  in  older  fo 
•  It'I'iaiid  T.  //<A/,  lliiit  !i(»l\vitlis(:iiidiiiii'  \V"s  ollci- 
T  \v;is  riilitlcd  to  Jin  iiijmiclioii  with  costs,  miuI  .mIso 
to  :iii  in(|iiiry  Jis  to  diiiiuiu't's  nt  liis  own  ii.-,k.  ISCd), 
Mn//s  ('/.,  Ti.ii-v  r.  W'jiid,  "Jl  /.atn  Tinirs  {X.  S.) 
4S(). 

j^  47;>.  All  inriiiiiiPiiicnt  of  ;i  tijidcniiirk  will  Im 
enjoined,  :dllioii,u,li  tiic  intent  of  I  lie  inl'iine'er  ni:iy 
linve  Ix'cn  entirely  iniiofent.  JiS.o.  ('/.  of  Con/. 
Plitiu,  P/iil.,  P(i.,  Dixon  Cnicihic  (.'o.  (\  Cfnggen- 
heinu  '2,  lirrtc.  \V2\\  S.  (;.,  7  /V/'7.  4()8. 

J^  474.  'rrjideniiirks  nic  i)i(.i)erty.  and  a  ])ej'soii 
iisinu:  such  marks  withont  iJie  sanctii  n  and  anthoi'- 
itv  ol"  the  owner  will  hii  resiri;!Me(|  l)v  ininnction, 
even  whei'e  it  does  not  appear  there  was  any  I'laiid- 
iilent  intent  in  their  use,  and  will  be  reipiiied  to  ac- 
count i'oi-  the  jd'olits  deiived  from  ilu^  sah;  of  i;()ods 
so  nitirked.  1870,  ManjUnifl  VI.  of  App.,  Stone- 
breaker  /".  Stonebreakei-,  oo  JA/.  ^.^J^. 

?!  47.").  The  Li'round  on  whicli  courts  of  (\]uity  af- 
ford r(4i<'f  in  cases  of  infrin.ii'cinent  ui)on  the  ri^ht 
of  pi'operty  in  trademarks  is  the  injury  to  the})arty 
a.u'urieved  and  the  imposition  \\\nn\  the  public.  The 
existence  of  theseconse(piences  does  not  necessarily 
depend  upon  the  question  whether  fraud  or  an  evil 
intent  does  or  does  not  exist.  'I'he  quo  (/uij//ot]H'H'- 
I'ore,  would .s<<'iii  to  be  aninimaterial  inquiiy.  1870, 
^Supreme  <//.  of  Enora.,  Co/i/i.,  Jlolines  f\  Holmes, 
Booth  A:  Atwood  ;Mannfacturinp,'  Co.,  I}7  Co/i/i.  278. 

§  47(5.  Where  the  i)i'obable  and  ordinary  conse- 
quences of  a  man's  acts  will  be  to  benelit  liimself 
to  the  injury  of  another,  liis  intention  to  produce 
such  a  result  nun'  be  legitimately  inferred.     I  bid. 

%  477.  These  matters  I  should  say  do  not  depend 
on  intention.     A  man  may  issue  a  label  or  trade- 


1t 


^^ 


156 


Intent. 


",!■;' 


ll: 


t     I) 


i   m 


nark  like  aiiotlicr  with  tho.  most  iiinofent  intention 
tossiblc  :  yet  the  hiw  is  selfh'd  that  if  in  truth  the 
radeniaik  is  sucli  that  it  is  eahMiiated  to  mislead, 
the  iisei-  will  be  juohibited  in  a  eourt  of  equity, 
\'iee(!h.  Mamxs,  1870,  Wothei'spoon  r.  Currie,  22 
Law  Tiiiu'.^  {X.  X.)  200;  S.  C,  18   MW/d//  R.  .'502. 

Jj  478.  A  iw'''i»'"i<'i^if  injunction  will  be  issued 
against  a  (h^fcndant,  who,  in  ignorance  of  the  plain- 
tiff's lights  and  elaiins,  has  used  a  tradenuirk 
belonging  to  th«^  plaintiif.  And  the  plaintilt'  in 
such  a  case  is  entitled  to  costs,  but  not  to  damages. 
1872,  N.  Y.  ^Hpnunc  (U.  Circuit,  AV'eed  i\  Peter- 
son, 12  Ahh.  P,\  {N.  X.)  178. 

^  479.  In  order  to  constitute  a  ground  for  inter- 
fei'ence  by  a  couit  of  equity,  to  protect  the  manu- 
facturei'  against  the  nse,  by  another  person,  of  the 
particular  name  of  his  manufactured  article,  it  is 
not  necessary  that  there  should  be  a.  mala  num.H 
towards  the  iirst  purchaser  of  the  article  thus  imi- 
tativel}^  designated.  The  fault  of  the  imitator  is, 
that  the  iirst  purchaser  may  be  enabled  through 
this  unwarranted  designation  to  retail  a  simulated 
article  at  a  lower  pi  ice  than  would  be  demanded  for 
the  original  article,  and  so  the  original  manufac- 
turer may  be  injured.  J^ord  Ch.  IlATnEiiLY,  House 
of  Lorch,  1872,  Wotherspoon  v.  Currie,  27  Law 
Times  It.  {N.  K)  393;  S.  C,  L.  Ji.  T)  Bur/,  ct  Ir. 
Appeals,  r)()8  ;  S.  C,  42  Law  Journal  11.  {N.  IS.) 
V/t.  IHO;  reversing  S.  C,  237..  Times  It.  {N.  S.) 
443  ;  S.  C.  18  W.  R.  912 ;  and  alliiming  S.  C,  22  L. 
T.  R.  (vY.  X)  200,  and  S.  (J.,  18  IK  R.  502. 

§  480.  NVhere  a  trademark  is  not  actually  cop- 
ied, fraud  is  a  necessary  eh^ment  in  the  ctmsidera- 
of  every  question  of  this  description — that  is,  the 
party  accused  of  X)iracy  must  be  proved  to  have 


Intent. 


157 


(lono  the  net  coniplainod  of  willi  tlio  frandiileiit 
(l(\si,<i'ii  of  ])assin^"  oil'  his  own  i^-oods  ns  thost^  of  the 
]):irty  <'iilil Ictl  to  tlio  exclusive  use  of  tli(>  ti'adfMiiaik. 
i'oi-  tlie  ])mi)ose  of  csfablisiiini!,-  a  case  of  iufriiiL>c- 
iiieiit,  il  is  not  necessaiy  to  shov,-  that  th(»re  has 
b(>en  tlu^  use  of  a  niaik  in  all  respects  cori'esji()iid!n<j,' 
with  that  which  anotlier  pei'son  lias  ac(]nii'(^d  an 
exclusive  riuht  to  use,  if  the  leseniJilanc;^  is  such 
as,  not  oidy  to  show  an  intention  to  d(M'eiv(\  but 
also  such  as  to  be  likely  to  make  unwary  purchasers 
suppose  that  they  are  purchasing  tlie  article  sold 
by  the  party  to  whom  the  right  to  use  the  trade- 
mark belongs.  Lord  Cuklmsfoud,  House  of  Lord.s^ 
Ihkl. 

%  48:2.  In  suits  to  restrain  tlie  fraudulent  use  of 
of  a  ti'ader's  name,  <^)r  of  a  trademark,  it  is  not 
lUM-essary  lo  give  proof  of  actual  deception ;  it 
is  enough  if  the  a(!ts  of  the  defendant  Jire  calculated 
to  deceive.  Nor  is  it  necessary  to  iind  that  there 
is  any  intention  on  the  part  of  the  defendant  to 
mislead  ;  that  is  immaterial.  187:2,  Y.  C.  Malhi's  CI., 
Ilookham  /'.  Pottage,  20  L.  T.  IL  {N.  S.)  7;").') ;  S.  C, 
20  W.  R.  T2() ;  S.  C,  on  appro  I,  21  ^V.  U.  Al ;  S.  C, 
L.  n.  8  ('//.  91  ;  S.  C,  27  Law  T.  11.  {N.  ^.)  oOo. 

^  4811  It  would  seem  to  l^e  immaterial  whether 
an  infringing  trademark  is  adopted  by  fraud  or 
mistake,  for  tlie  injury  is  the  same.  1875,  l^upreme 
in.  of  North  Carolina,  Blackwell  v.  Wright,  7.'}  X. 
C.  310. 

g  484.  Intent  is  immaterial.  187G,  N.  Y.  Su- 
preme CI.,  /S'.  7\,  The  Amoskeag  Manufacturing 
Company  v.  Garner,  4  Am.  Laio  limes  R.  {N.  H.) 
176. 


I 


See  also  §§  290,  291,  292,  962. 


Hr 


li'':-  ■ 


168 


JuRiSDicTiox — Labels. 


■.vf:-: 


JURISDICTION. 


■m 


See  §§201,  490,  C33,  791  ;  see  Ixjunctioi?-. 


KNOWLEDGE. 


See  Intent. 


LABELS. 


§  490.  Labels  used  on  vials  and  bottles  to  desig- 
nate certain  medicines,  and  the  diseases  cnred  by 
tlieir  use,  are  not  books  within  the  meaning  of  the 
copyi-iglit  act.  They  are  of  m.  rahie  except  as  la- 
bels, for  wliich  they  are  designed.  Their  pnblica- 
ti(m  could,  by  no  possibility,  injure  the  Avriter  or 
author  of  the  labels.  If  falsely  applied  to  medi- 
cine, with  a  view  to  impose  upon  the  public,  and 
injure  the  inventor  of  the  medicine,  chan(!ery  will 
enjoin.  But  the  circuit  court  of  the  United  States 
cannot  inquire  into  such  a  case,  when  both  parties 
live  in  the  same  State.  1848,  U.  .S'.  Clr.  CL,  Ohio 
Dis'f.,  Scoville  v.  Toland,  G  West.  Laio  Jour.  84. 

§  491.  A  manufacturer  has  no  right  to  the  exclu- 
sive use  of  a  x>nrticu]ar  colored  paper,  or  kind  of 
paper,  for  covering  or  inclosing  his  goods  in  any 
l)articular  form.  1807,  N.  Y.  Supi'cme  (Jt.,  S.  T., 
Faber  v.  Faber,  49  Barb.  357;  S.  C,  3  Abh.  Pr. 
{N.  8.)  115. 

§  492.     In  an  action  to  recover  damages  for  an 


im 


Labels. 


109 


alleged  invasion,  by  imitation,  of  the  plaintiff's 
tradomnrk  for  the  sale  of  a  certain  washing  powder 
which  consisted  of  a  highly  colored  pictnre,  repre- 
senting a  Avash  room,  Avith  tnbs,  baskets,  clotlies 
lines,  etc.,  also  the  following  legend  inte^'blended 
with  it :  "  Standard  Soap  Company,  ErasiveAVash- 
ing  Powder,"  followed  liy  directions  for  the  use  of 
the  "  washing  powder,"  and  the  place  of  mannfnc- 
tnrc  ;  the  alleged  imitation  by  defendants  consisted 
of  a  i^icture  and  label  which  were  the  same  as  in 
plaintiff's  alleged  trademark,  only  in  the  use  of  the 
words  "washing  powder,"  the  directions  for  the 
use  of  the  powd(n',  and  in  the  use  of  paper  of  the 
same  color  as  that  used  by  plaintiff.  Held,  that 
this  did  not  constitute  an  infringement  of  plaintiff's 
trademark.  18G8,  Supreme  CI.  of  Cal.^  Falkinburg 
I).  Lucv,  35  Cal.  52. 

§  493.  The  plaintiff,  for  the  purpose  of  distin- 
guishing the  spoons  of  his  manufacture  from  all 
other  Britannia  spoons  sold  in  market,  and  for  the 
I)urpose  of  designating  diff'erent  classes  of  his  own 
goods,  adoj)ted  different  labels  of  jiarticular  size, 
color  and  form,  with  his  own  name  and  some  term 
descriptive  of  the  spoons  thereon,  and  certain  figures 
arbitrarily  chosen,  each  class  of  spoons  being  indi- 
cated by  lixed  luimbers.  Said  labels  constituted  the 
only  trademark  under  which  he  introduced  his  goods 
into  market,  and  under  said  labels  and  numbers 
his  goods  had  become  generally  known  in  the  mar- 
ket and  had  obtained  a  good  reputation,  and  a  large 
demand  had  grown  up  for  them,  and  they  were  gen- 
erally known  by  their  respective  numbers  and  gen- 
erally ordered,  bought  and  sold,  by  the  numbers  on 
the  labels.  Held,  that  the  labels  thus  arranged  and 
used  were  entitled  to  protection.    The  defendant 


1 

1 
i 

4 


i 

f 

w 

SI 

i. 

1: 

I" 

'^. 

!' 

?■■ 

1 ' 

•;j 

■•■1-I 

m 


I 


a 


1 


160 


Labels. 


iikkIo  spoons  similni*  in  cliii:.;  '  ^^^  to  those  made  by 
phiinrilV,  llioiiu'li  (lifFeringsomewii.it  in  style  oi'i^it- 
lei'ii,  and  ])reparcd  labels  resembling  the  plaintilFs, 
jind  adopted  the  sjinie  numbers  for  similar  kinds  of 
s])()()ns.  th(f  labels  being  so  similar  that  an  unwary 
trader  who  did  not  r(^:id  the  name  upon  them  might 
be  d(M'eived.  The  del'(Midnnt  adopted  snid  labels 
with  the  particular  numbeis  for  the  purpose  of  aid- 
ing the  introduction  ol'  his  spoons  into  the  marlvct. 
IhiiJ,  ijnit  del'endani's  labels  wei'e  a  violation  of 
the  trademark  of  the  plaintiff,  although  he  put  his 
own  name  on  the  lal)els  in  the  place  of  that  of  the 
phuntilf  ;  and  it  seiMns  that  the  use  of  the  figures 
witii  a  ciplKH"  prefixed  would  not  vary  the  result. 
18()S,  (^oiLiiarl.iniU  l^iip.  C'/.,  Boardman  «.  Meriden 
Britannia  Co.,  '.],")  Conn.  402. 

§  404.  Where  the  plaint ilf  has  the  right  to  the 
exclusive  use  of  a  trademark,  in  a  particular  article 
of  manufacture,  anv  labels  used  bv  defendants 
whii'h  are  calculated  to  deceive  the  public  into  tlie 
belief  that  the  article  they  are  selling  is  the  article 
made  and  sold  by  the  plaintiff,  will  l)e  restrained 
by  injunction  and  the  plaintiff  fully  protected. 
18G8,  'n.  Y.  Com.  Pleas,  G.  T.,  Curtis  v.  Brj^an,  2 
Dalij.  ?>\2  ;  S.  C,  30  llow.  Pr.  33. 

$^  41).").  A  label  at  coiumon  law  is  not  a  trade- 
mark, but  when  a  manufacturer  or  seller  of  goods 
a(h)pts  a  label  to  distinguisli  his  good;'  from  those 
of  another,  lie  is  entitled  to  be  protected  in  its  use, 
and  others  will  be  enjoined  from  using  the  same,  or 
a  colorable  imitation  thereof.  1873,  Suprcine  CL 
ofCal.,  Burke  v.  Cassin,  45  Gal.  407. 

j^  490.  An  imitation  of  a  label  used  on  goods  is 
a  false  rejjresentation  that  the  goods  to  which  it  is 
attached  were  manufactured  or  sold  by  the  person 


LAr,i:L>5. 


101 


whoso  label  was  ropiod  or  imitated,  and  ])iii"('lias(M'.s 
are  deceived  and  liable  to  be  defrand(Ml.  (,'a.s<>  of 
Ftdkinbiiruh  /•.  Lncy,  ;3.")  Cal.  52,  explained.    I  hid. 

i  4!)7.  Where  a  person,  by  a  eonibination  of 
elements  and  symbols,  has  in'<^tlnced  a  wra]>p<'r  to 
enclose  and  desiiijiate  an  article  manuractiired  by 
liini,  iindei-  which  il  has  ,<rone  into  use,  he  cannot 
be  interrei'(.'d  with  or  despoik^d  of  his  hiwJ'iil  l)U.si- 
ness  by  the  adoption  of  a  label  bv  anothei',  sinular 
in  color,  si/.e,  boi-der,  omamentation,  symbol,  and 
colored  ink.  and  so  closely  an  imitation,  that  the 
careless  or  unobservant  iniichaser  may  ))e  readily 
ndsk^L  Such  ])ractices  are  deceptive,  and  have 
their  oi'igin  in  and  ])romote  dishonoia'ole  competi- 
tion. In  order  to  justify  the  intei'vention  of  a 
court  of  equity,  it  is  sullicient  that  the  inutation  is 
so  close,  that  a  crafty  vendor  may  palm  olf  on  the 
buyer  the  article  manufactured  by  the  latter,  as 
that  of  the  former,  it  is  no  answer  to  an  a])])lica- 
tion  for  an  injunction,  that  in  certain  particulars, 
the  label  of  tlu^  defendant  dl ll'ers  from  that  of  the 
pUuntilV,  so  loui;"  as  tln^  imitation  in  other  res])ect.s 
is  so  close,  that  the  genei'al  appearance  is  tlie  same, 
and  purcliasers  have  l)een  and  ar(  lik(dy  to  be  de- 
ceived. 1874,  X.  Y.  ISuperior  CL,  /S'.  7'.,  Brown  v. 
Mercer,  H7  .V.    >:  Superior  CL  20."). 

§  498.  Tlie  jjlainliir  imported  and  sold  an  article 
known  as  '•Julienne,"  composed  of  various  ve<j,e- 
tables  for  makinu'  julienne  soup,  whicli  was  j)r(^pa)'ed 
and  put  up  exin-'ssly  for  him  by  the  iirni  of  JlolJier 
&  Co.,  in  I'aiis.  Theie  was  evidence  that  a  similar 
article  designated  ".lulienne"  was  jtrepaied  and 
put  np  at  other  establishments  in  France  and  im- 
ported to  this  country.  Plaintiff  devised  a  trade- 
marlv  or  label  for  the  article  sold  by  him  ;  the 
11 


,'l 


\k 


} 

162 


Laches. 


(lovice  consisted  of  the  words  "conserves  aliiiien- 
taires,"  under  which  was  tlie  coat  of  arms  of  tlic 
city  of  Paris,  upon  either  side  the  monourani  A. 
C.  in  a  circle,  and  underneath  the  words  "Paris" 
and  "Julienne,"  with  directions  for  ])re]>arinn' for 
use  and  usin.i;".  Subsequently,  the  defendants  s()l<l 
a  similar  article  with  a  device  in  all  respects  lik(; 
the  jilaintilfs  device,  except  that  the  nionoiii-ani 
was  F.  G.  In  siz«»,  type,  color  and  ajipeai'ance,  the 
two  devices  were  entirely  alike.  Ileld^  that  i)laiu- 
titf's  label  as  a  whole  was  entitled  to  protection, 
and  that  the  defendants  should  be  enjoined.  That 
the  combination  of  all  the  words  and  symbols  which 
the  plaintiff  had  put  upon  his  label  entitled  him 
to  be  protected  against  the  appropriatior  and  use 
of  such  combination  by  the  defendants.  ]87o,  N. 
Y.  Superior  Ci.,  S.  T.,  Godillot  v.  Hazard,  49  Iloto. 
Ft.  5. 

See  also  Imitation. 


■I:  ^ 


LACHES. 


§  505.  A  plaintiff  laid  by  for  two  years  before 
filing  his  bill  for  an  injunction,  having  seen  labels 
of  the  defendant  exhibited  publicly,  which  he  r.w 
complained  of  as  being  colorable  imitations  .  ''■.'•■i 
labels.  I/el(7,  that  such  laches  disentitled  the  ,».  ii.'- 
tiff  to  relief.  1666,  Vice  C7t.  Wood's  CL,Bt  a  t\. 
Turner,  IS  L.  T.  (iV.  8.)  1^1. 

§506.  Plaintiff's  article  was  known  as  "East- 
court's  Hop  Supx)lement."  Plaintiff  brought  suit 
to  restrain  defendant  from  using  the  words  "Est- 
court's  Hop  Essence"  for  a  similar  article,  but  as 


L  KIT  Kits. 


io;3 


he  (loljiyed  cfmiimMicinii:  suit  fi'oTii  Jimiuii-y,  1874. 
to  Aii<i-nst.  1S74  :  J/r7//,  tlint  lie  wiis  [)r('olii(l('(l  l>y 
(IcImv  from  iii;'lit  to  rf»lipf.  187."),  C/f.  f7.  of  J/>- 
pcnl,  Eustcoui't  /".  Estcourt  Hop  Essence  (.'oiiipMiiy 
(  Li  mi  ted),  44  L.  J.  U.  {N.  K)  Vh.  2-i;} ;  S.  (\,  />.  //. 
10  r//.  L>70  ;  S.  C,  82  L.  T.  U.  {N.  K)  80;  S.  ('..  2:5 
ir.  7.».  :m;{;  reversino-  S.  C,  31  L.  T.  JL  iX.  s.^ 
507. 

See  also  Acquipisckxck;  Auaxdoxmext;  Lim- 

I'lATIOXS. 


LETTERS. 

§  510.  The  plaintiffs  had  a  patent  for  the  man- 
ufacture of  case-hardened  ploughshares,  which 
they  Avere  accustomed  to  mark  with  the  words 
"Kansome's  Patent,"  and  with  the  letters  II.  II. 
to  denote  that  the  shares  were  case-hardened,  and 
also  with  cei'tain  numbers,  as  Xo.  0,  to  denote  their 
size.  The  defendant  marked  his  ploughs  ''Kan- 
some  &  Co.,  II.  II.  0  ;"  he  admitted  the  use  of  the 
woids  "  Rans(mie  &  Co.,''  but  said  it  had  been 
dcme  under  belief  that  the  j)atent  had  expired  ;  but 
he  claimed  the  right  of  using  the  letters  and  figures 
H.  II.  G.  An  injunction  was  granted  resti-aining 
the  defendant  from  using  said  words  or  letters  on 
ploughshares.  1884,  Vice  C/t.  Cf.,  Ransom  i\  Ben- 
tall,  8  La/D  Journal  R.  {N.  S.)  101. 

§  511.  The  boxes  of  tin  plates  made  at  parties 
ular  works  at  Carmarthen  were  for  a  long  series  of 
years  branded  with  the  mark  "M.  C."  S,  a  lessee 
of  those  works,  who  had  used  that  mark  while 
tenant  of   the  works,  subsequently  removed    his 


"  'I 


{■ 
r 


,1 

T 

si 
0 


■  i.,     ■ 
1 

fBb 

ill 

U    ' 


II  ■ 


i>' 


:l 


104 


Letters. 


iiinnufnrfory  fo  other  worlxs,  nt  a  distance  of  forty 
miles,  and  there  used  thc^  sjinie  mai'k.  Tlie  ownei- 
of  the  ])i'o])ei'ty,  as  soon  as  tlie  lease  expired,  re- 
nioiistiMted  ii/^ninst  Mr.  S's  continuing  to  use  the 
s.iid  iiijirk,  which  had  always  been  used  to  desiu- 
nate  tlie  tin  ])liites  ninnufnctured  at  the  Carmarthen 
^vol•ks.  Th(^  Carmartlien  woiks  vvei-e,  for  some 
y<\ns,  unoccupied  ;  l)ut  afterwards  I),  and  others 
as  c<)[)artners,  liavinii;  taken  a  leases  of  them,  carried 
l]i(>iu  on.  and  bianded  tlieir  boxes  with  tlie  mark 
"M.  ('.,"'  and  styled  themselves  "The  M.  C.  Tin 
J'iatc  ('(>m])any."  S  then  obtained  an  injunction 
to  ]esfiain  J)  and  his  partners  from  using  the  mai'k 
-M.  V.r  or  the  designatiim  of  "^JheM.  C.  Tin 
l^late  Company  ;"  but  u]Km  appeal,  it  not  appear- 
ing ceitain  to  the  coui't  that  the  pkaintilfs  had 
acquired  a  light  to  prevent  other  subsequent  tenants 
of  llie  woi'ks  at  Carmarthen  from  using  said  mark, 
which  vas  originally  derived  from  said  works,  the 
injuiu'tion  was  dissolved,  with  liberty  to  S  to  bring 
an  action.  1837,  before  Ld.  Ch.  Cottexham,  Mot- 
ley /'.  Downman,  3  ^ff/^.  tt*  Or.  I  ;  S.  C,  C  La?o  J. 
]i.  (X  X.)  C/t.  :J()8. 

§  0I2.  AVhere  plaintiffs  used  the  words  "  Amos- 
keag  Manufacturing  Companj^  Power  Loom,  Yds. 
,  AC  A,  Amoskeag  Falls,  N.  IL,"  and  defend- 
ant the  words  ''Lowell  Premium  Ticking,  Power 

Loom,  Yds. ,  AC  A,  Wananted  Indigo  Blue," 

the  shape  and  color  of  the  labels  l)eing  the  same,  an 
injunction  was  granted,  i-estiaining  the  defendant 
fj(mi  using  his  said  labels.  But  that  part  of  the 
injunction  restiaining  the  use  of  any  labels  with  the 
letters  AC  A  therecm  was  stricken  out.  1849,  i\''. 
Y.  Stnprr/or  CL,  f^.  T.,  Amoskeag  M'fg  Co.  v. 
Spear,  2  i-fa/id.  Siqj.  CL  599. 


t     !, 


Lkttkus. 


105 


§  513.  Tliere  can  be  no  doubt  that  two  lotters 
may  constitute  a  tiadoniaik.  The  lottei's 'vL.  L." 
laid  a  tiadeniaik.  1S(;;{,  I  ^oid  Ch.  J3i:ady,  Kinahan 
».  Bolton,  15  ///.vA  Vh.  IL  75. 

-;;•  514.  A  hnn  originated  and  adopted  a  method 
of  piei)aiing  whiskey,  whereby  ii  pecuHar  llavoi-  >v;!s 
imparted,  and  marked  the  wiiiskc^y  so  )>repared  with 
tlie  letters  "L.  L.,"  beini"'  the  initial  lettcis  of  the 
words  Lord  Lieutenant,  and  sold  it  in  boirles.  jars 
and  casks,  having  tlie  letters  '"  L.  L."  with  a  ducal 
coronet  impressed  on  the  corks  of  the  casks,  of  the 
bottles  and  jars,  and  also  having  a  label  alHxed  on 
the  outside  of  the  casks,  bottles  and  jars,  having 
l)rinted  theieon  a  ducal  coronet  and  "  L.  L  AVhis- 
koy."  Evidence  was  given  that  in  the  tra(h>  the 
letters  "•  L.  L."  were  understood  to  mean  a  peculiar 
whiskev  sold  bv  the  lirm  of  Kinahan  &  Sons,  and 
not  any  other  whiskev  of  the  same  class.  It  ap- 
peared  that  the  newspaper  advertis«Mnents  issued 
by  tlie  x>t*titioners  described  the  whiskey  sold  by 
them  as  *' L.  L.  Whiskey"  sim])h',  although  on 
the  labels  those  letterswere  alwavs  preceded  bv  the 
word  "  Kinahan" s."  The  Lord  Chancellor  said 
that  the  word  "Kiiuihan"  vlid  not  seem  to  have 
been  incorporated  with  the  trademark,  l)Ut  to  ha\e 
been  inserted  to  say  that  the  whiskev  was  madt^  or 
prepared  by  Kinahan,  and  could  not  be  had  else- 
where. The  respondent  was  restrained  by  injunc- 
ti(m  from  using  the  letters  "L.  L."  for  whiskey 
sold  by  liim.     Ibid. 


\% 


\*  : 


liy-im: 


See  also  Imitation. 


See  also  §§  656,  674,  751,  757. 


IF 

'A  J 


■I  -ijiia  uijiiiiiwiwiiiigiHwwiiii 


WW 


'-■•■i  , 


166  LiCEXSE. 


LICENSE. 

?  520.  Elias  Ilowe,  Jr.,  in  1840  obtained  a  })atent 
for  a  sewin.i?  niacliine,  and  gave  a  license  to  liis 
bi'otliei',  the  plaintiif,  to  nse  liis  patented  right  or 
('oiiil)ination,  in  the  niannfactui'e  of  sewing  nia- 
cliincs.  Before  IS.")?  the  plaintiff  phiced  on  the 
machines  manufactuied  bv  him  his  own  name, 
"A.  B.  Howe."  In  1857  he  snbstituted  the  name 
•"Jlowe"  for  "A.  B.  Ilowe "  and  snl)se(]iiontly 
cv«*i'v  niacliine  manufactured  bv^  him  had  the  word 
'"Howe"  on  a  conspicuous  place  on  it ;  such  word 
being  used  to  denote  the  plaintill'  as  the  manufac- 
tiirer,  and  not  to  denote  Elias  Ilowe,  Jr.,  as  the  in- 
ventor. JId(f,  1.  That  the  fact  that  the  plaintiff 
w^as  the  licensee  of  the  inventor  and  could  not  have 
manufactured  his  machines,  without  using  the  i)fft- 
ented  combination  of  the  inventor,  and  therefore 
could  not  have  mannfactui-ed  them  without  the  in- 
ventor" s  license,  did  not  and  could  not  interfere  with 
or  imi»air  his  right  to  adopt  and  appropriate  a  trade- 
mark to  mark  or  distinguish  the  machines  manu- 
factured by  him  from  from  those  manufactured  V)y 
other  licensees  of  the  inventor.  2.  That  the  circum- 
stance that  licensees  did  nse  and  liad  to  nse  the 
patented  right  or  combination  of  the  inventor  as 
liis  licensees  in  mannfacturing  their  machines,  did 
not  affect  the  qnestion  of  the  right  of  either  of  snch 
licensees  to  adopt  and  appropriate  a  tj'ademark, 
even  as  against  Elias  Howe,  Jr.,  as  a  manufacturer 
of  sewing  macdiines.  18(57,  N.  Y.  Snpreine  Ct.,  G. 
T.,  Ilowe  r.  Ilowe  Macliine  Co.,  50  Barb.  230. 

§  521.     The  nse  of  the  name  of  a  steamship  line 
while  the  shippers  Avere    agents  for  a  steamship 


i  '  fe  'ji 


Limitation'. 


ic: 


m 


compnny,  is  ji  inei-e  license  and  ^ives  no  right  to  its 
use  ai"t<^i'  the  a,i;en('y  is  terininuted.  187:^,  i'l.  <>/ 
Com.  Pled.s,  Vhil.  Pa.^  Winsor  v.  Clyde;  Stetson 
c.  AVinsor,  'J  Phil.  i513. 

See  also  AcQUiESCiXCE. 


■•■  *i 


LIMITATION. 


§  525.  An  action  to  i-ecover  damages  for  the  in- 
fringement of  a  trademark  will  lie,  although  at  tli(3 
time  the  article  was  sold  by  the  defendant,  tiie 
l)laintiif  employed  another  inaik and  had  disccmtin- 
ued  the  use  of  the  t)ne  imitated.  The  wrong  and 
injury  to  the  plaintiff  consist  in  the  sale  of  an  arti- 
cle falsely  purporting  and  declared  to  be  of  his 
manufacture,  and  it  makes  no  difference  whether 
the  deceit  be  effected  b^'  counterfeiting  his  present 
trademark,  or  one  that  he  formerly  used.  Hence, 
the  fact  that  the  plaintiff  had  discontinued  the  use 
of  his  trademark  for  three  years  and  had  adopted 
a  new  mark,  would  not  deprive  him  of  a  right  of 
action  against  the  defendant  for  selling  leather 
which  was  not  manufactured  by  the  i)laintilf,  ])iit 
stamped  in  the  same  manner  in  which  tlie  pltuntilf 
had  formerlv  designated  the  leather  manufactured 
by  him,  thus  purporting  to  be  of  his  maimfac.'ture 
and  declared  by  the  defendant  at  the  time  of  sale 
to  be  the  genuine  Lemoine  calfskins.  1854,  JV.  Y. 
Com.  Pleas,  G.  T.,  Lemoine  «.  Gauton,  2  PJ.  1). 
SmWi,  343. 

§  520.  A  person  who  does  not  assent  to  the  use 
of  his  trademark  by  another,  cannot  be  deprived  of 
his   rights  by  omitting  to  bring  an  action  for  a 


~  V- 


J 


';J'-' 


W' 


J 


"•■''■il 


IFf 


IC8 


Makks — MisKi;pui:si;NTAiH)\. 


period  of  nine  ycius.       1871,  C/i.  Ct.    of  Aj)i)<'((I, 
Lazeiiby  v.  White,  41  Law  Jour.  (iV.  H.)V/i.  8;V1. 

See  also  Acquiescence. 


MARKS. 
See  Devices. 


MAGAZINES. 


See  Publications. 


MISREPRESENTATION. 

§  o30.  The  plain  tin."  had  made  a  new  sort  of 
mixed  tea,  and  sold  it  under  tlie  name  of  ''now- 
qua's  mixtuie  ;"  but  as  he  had  made  false  state- 
ments to  the  public,  as  to  the  teas  of  which  his 
mixture  was  composed,  and  as  to  the  mode  in  which 
they  Avere  procured  (by  intimating  in  his  labels  and 
advertisements  that  the  mixture  was  made  by  llow- 
qua,  in  Canton,  and  iini)orted  into  England  by  the 
plaintitf,  in  the  packages  in  which  it  Avas  sold  ; 
that  the  tea  which  gave  it  its  peculiar  liavor  was  very 
rare  and  high-priced,  even  in  China,  and  was  grown 
only  in  the  province  of  Kyiang  Nau  ;  and  that  it 
could  not  be  prociiied  in  England,  at  any  jjrice); 
the  court  refused  to  restrain  the  defendant  from 
selling  tea  under  the  same  name,  until  the  plaintiff 


MisKi:i'Ui:si:xTATi(>x. 


100 


I 


K!^   » 


had  cshiMisliod  his  title  nt  law— jiiid  the  cr  jturfr 
iiijunctiou  was  (jissolvcd,  with  li'icily  to  llic  plain- 
till"  t(»  hriiiu'  such  action  as  hr  iiiiulit  Itc  advised. 
iy:5T,  JI!>//(  Ci.  of  Vlaihrifii,  ridiliii<^-  (\  How,  S 
J^//N(>/i-'<,  477. 

jir);)!.  If  a  [)Iaiiitill'  ('(uniiiu- Cor  an  iiijiinction  in 
a  liadcniaik  i'asc  appears  to  have  been  iiiiilty  of 
iuisrei»i'esentations  to  the  pnblic.  the  conrt  will  not 
intei'l'ere  ill  Ihehi'st  instance.  Accord in,!i,-|y,  wher<i 
it  appeared  that  a  Mr.  Lcdlliail  had  invenled  u 
mixture  I'or  the  hair,  the  recipe  ior  niakin.i;'  which 
he  sold  to  the  i)laintilV,  who  gave  to  the  conii)o- 
sition  the  name  of  "Medicated  Mexican  I'alin," 
and  sold  it  as  '•IVmiv's  Medicated  Mexican  J'alm,"' 
and  nsed  a  i)rinted  show-card  in  which  he  repre- 
sented that  the  article  was  an  extract  of  vegetable 
balsamic  ju-odnctions  of  Mexico,  and  that  said  com- 
position was  "■  iinnlc from  <in  orltjIiKil  rvcipc  (fl/tc 
learned  ./.  F.  Yon  Bluim  uhnch^  "and  recently  pre- 
sented to  the  proprietor  by  a  very  near  relation  of 
that  illustrious  physiologist — and  the  (hvfendant 
commenced  selling  a  composition  "which  he  desig- 
nated and  sold  as  "Truelitt's  Medicated  ^lexican 
]3alm."  in  bottles  and  with  labels  closely  icsem- 
bling  those  nsed  by  the  plaintilf — an  injunction 
was  denied,  Avith  liberty  to  the  plaintiff  to  com- 
mence an  action  at  law.  1842,  RolU  Ct.,  Terry  c. 
Truehtt,  0  lieamtu  CO. 

^- 1)'6'2.  It  is  not  the  office  of  chancery  to  inter- 
vene  by  its  summary  process  in  controversies  be- 
tween the  vendors  of  a  qnack  medicine.  A  com- 
plainant, wliose  business  is  imposition,  cannot  in- 
voke the  aid  of  equity  against  tlie  piracy  of  his 
trademarks.  The  only  remedy  in  siicli  a  case  is  at 
law.     Iloice,  iDrotection  to  the  words  "  Dr.  AVistar*  s 


■.!ij 


11 


id 


"^■fil 


-;!j1| 


I' :  i!:  ■ 

iJi- 


170 


MiSKEPRESENTATIOX. 


"i 


Balsam  of  Wild  Cliei-ry  "  Avas  refused.  1847,   U.  S.- 
Cir.  C/.,  P(i.,  Fowle  «.  Spear,  7  P^^y^/i.  Z.  /.  170. 

§  ^^'^'.^.  If  the  label  contain  a  misrepresentation 
by  the  use  therein  of  the  iiame  of  a  former  i)ro- 
prietor  it  will  not  alter  the  case  that  the  complain- 
ant purchased  the  ri<iht  to  use  that  name.  The 
l)rivilei^'(?  of  deceiving  tlie  public,  even  for  their  own 
l)enelit,  is  not  a  legitimate  subject  of  commevce. 
1848,  N.  Y.  CI.  of  Appeah,  Partridge  v.  Menck,  1 
Jlofo.  App.  Cus.  547. 

§  5134.  The  complainant's  label  contained  the 
words  "A.  Uolsh's  Friction  Matches,"  when,  in 
truth,  Golsh  had  no  concern  or  interest  in  the  busi- 
ness, and  had  left  the  country.  l£eld^  that  the  label 
c(jntained  a  misrepresentation  on  its  face,  and  would 
not  be  protected  by  injunction.  That  it  is  no  suf- 
iicient  answer  that  the  comphiinant  obtained  from 
Golsh  the  secret  of  the  manner  in  Avhicli  his  match- 
es were  prepared,  or  that  he  manufactured  an  arti- 
cle in  all  respects  ecpial  to  that  otl'ered  by  (iolsh, 
the  former  propiietor.  Nor  does  it  alter  the  case 
that  the  complainant  purchased  the  right  to  use  Ihe 
name  of  A.  Golsh.  The  i)rivilege  of  deceiving  the 
public,  even  for  their  own  benelit,  is  not  a  legiti- 
mate subject  of  commerce  ;  and  at  all  events,  if  the 
maxim  that  he  who  asks  ecpdty  must  come  with 
pure  hands,  is  not  altogether  obsolete,  the  com- 
plainant has  no  I'ight  to  invoke  the  aid  of  a  court 
of  chancei'y  in  ftivor  of  siu'h  a  monopoly.     Ihid. 

§  t)?C).  The  wrappers aiul  pamphlets  of  theplain- 
tilFs  article  contained  extravagant  representations 
as  to  its  uiuversal  curative  elfeci.s,  but  as  the  labels 
and  wrappers  used  by  the  defendant  were  similar 
in  form  to  and  copied  from  those  used  by  the.  plain- 
tiff, the  defendant  was  restrained  from  the  use  of 


MiSRKPKESEXTATIOX. 


171 


the  simulated  labels  and  wrappers  by  injunction. 
18,")0,  Molls  Ct.^  llolloway  o.  Ilolloway,  ];3  Bear. 
201). 

$5  r)oG.  The  court  refused  to  grant  an  injunction 
at  the  suit  of  Flavell,  to  restrain  Harrison  from 
niakinu"  and  sellin';a  stove  bv  the  name  of  "  Flaveirs 
Patent  Kitchener,"  on  the  ground,  lirst,  that  Flavell 
hitd  falsely  assumed  to  describe  the  article  as  being 
patented  ;  and,  secontlly,  that  he  had  known  of  the 
use  of  the  name  by  ILirrison  four  months  befon;  he 
had  ai»pli(MT.  for  an  injuncthm.  But  the  court,  not 
deciding  whether  Flavell  had  or  had  not  a  legal 
remedy,  i-ctained  the  bill,  giving  him  liberty  to 
bring  an  action.  18.");$,  Vice  C/t.  Wood's  CI.,  Flavell 
T.  Harrison,  10  Ilarc,  407  ;  S.  C,  10  Entj.  L.  &  Eq. 
15  ;  S.  C,  17  Jiirlsl,  WO^. 

^  0:37.  The  plaiui  ill's,  who  had  purchased  the 
patent  and  the  right  to  use  the  name  of  T.  &  Co., 
the  patentees  of  solid-heiuled  pins,  and  also  the 
labels,  &(',,  used  l>y  T.  &  Co.  for  said  pins,  contin- 
ued, after  the  expirati<m  of  the  patent,  to  use 
Inbels  on  their  goods,  printed  from  the  original 
blocks  f"i'nierly  belonging  to  the  patentees,  on 
which  lahel  the  goods  were  described  as  patented. 
The  defendants  a(h)pted  and  issued  labels  closely 
resembling  those  of  the  plaintilfs.  And  under  such 
circumstances,  although  the  description  of  the 
2)ljuntill"s  goods  on  llieir  labels,  as  being  patented, 
liad  ceased  to  be  strictly  true,  and  although  the 
labels  amjounced  that  the  pins  were  "exclusively 
manufac  ui'ed  by  T.  &  Co.,"  when  in  fact  they 
were  not  manufactured  at  all  by  T.,  who  had  long 
since  retired,  tlie  ctnirt  granted  an  injunction  re- 
straininu'  the  defendants  from  using  labels  bearing 
an  inscription  appearing   to  designate  the  goods 


172 


MlSREPIIKSENTATIOX. 


contained  thorein  as  beint^  manufactured  liy  the 
plaintllFs.  iSXl  Vice  Ck.Woo(r.s  67.,  Edelston  r. 
Vick,  11  Ilfirc,  78;  S.  C,  18  Jurl.'il,  7;  S.  C,  23 
ii/z/y.  Lffio  &  Eq.  ol. 

§  ooS.  Chancery  will  not  interfere  by  injunctions 
in  questions  of  trademarks  between  the  venders  of 
j)atent  uH-dicines,  beinii;  quack  medicines;  such 
questions  havin^i,^  too  little  merit  on  either  side. 
Hence,  ju'otection  to  the  word  "Kathairtm"  was 
refused.  IS.')."),  Heath  t.  Wright,  3  Wall.  Jr.  U.  S. 
Clr.  CL,  Pa. 

§  530.  It  is  no  defense  to  an  action  brought  to 
restrain  the  defendants'  use  of  the  plaintiirs  trade- 
mark upon  an  article  intrinsically  valuable,  that 
the  trademark  in  question  is  false  and  fraudulent, 
used  by  the  plaintiff  with  intent  to  deceive,  and 
that  the  article  which  is  accompanied  by  it  is  not 
what  the  tradeniaik  indicates  it  to  be.  Certain 
tiademarks,  owned  by  plaintiff,  containing  these 
w(nds,  respectively,  one  of  them,  ''II  A:  M's  patent 
thread,  Barnsley,"  and  the  other,  "G&  Ws  cel- 
ebrated patent  thread,  IVrwick;"  llihl,  that  the 
fact  that  the  thre:uls  Aveie  not  [latented,  and  were 
not  made  by  the  persons  whose  names  they  bore, 
nor  by  tlieir  assignees  or  successors,  nor  at  the 
places  designated  on  the  trademarks,  but  that  the 
trademarks  were  false  and  fraudulent,  constituted 
no  defense,  and,  theiel'ore,  a  motion  to  amend  the 
answer  by  inserting  allegations  to  that  effect,  was 
properly 'denied.  18.")(5,  N.  Y.  Voui.  Phas,  S.  T., 
Stewart  v.  Snuthson,  1  /////.  111). 

§  .040.  A  court  of  equity  will  not  interfere  to 
l)rotect  a  party  in  the  use  of  a  trademark  where  tlie 
name  claimed  as  such  is  intended  and  calculated  to 
deceive  the  ijublic.     It  may  be  true  that  the  de- 


MiSKEPUESEXTATION. 


173 


n. 


fendants,  if  porniitted  to  use,  in  their  conteiii- 
plntcd  sales,  a  rnidemaik  iippai-eiitly  the  same  as 
the  2>^'ii'i'dr"s.  would  eor.iniit  a  IVaud  upon  tlie 
piaiiiti.'fs  and  iiiH)ii  the  })ui)li<' ;  lait  il'  the  i)lainti(l-'s 
are  themselves  eima'^ed  in  the  execution  of  a  sas- 
tematic  plan  foi-  deceiving"  the  public,  if  they  liave 
been,  and  still  are,  endeavoring,  constantly  and 
daily,  to  niultii)ly  th<Mr  sales  and  swell  their  prolits 
by  false  represcMitations  of  th(^  composition,  (pialities 
and  uses  of  the  liquid  ccmipound  which  the;-  invite 
the  public  to  buy,  they  cannot  be  listened  to  when 
they  complain  that,  by  the  frandulent  rivalry  of 
others,  their  own  fraudulent  profits  are  diminished. 
An  exclusive  ])rivileg'e  for  di^ceiving  the  [)ublic  is  as- 
suredly not  one  that  a  conrt  of  etputy  can  be  required 
to  aid  or  sanction.  To  do  so  would  be  to  foil'eit  its 
name  and  character.  ISoT,  jV.  Y.  ^Superior  (JL,  J>!. 
T.,  Fetridn-e  r.  Wells,  4  AM.  Fr.  144  ;  S.  C,  13  IIow. 
Pr.  385  ;  «ee  Fetridge  r.  Merchant,  4  Ahb.  Pr.  loO. 

§  541.  Where  it  apjx'ars  in  an  action  to  restrain 
an  infringement  of  plaintiffs  trademark,  that  de- 
fendant has  deliberately  and  without  an}^  previous 
connection  with  the  particular  business,  adopted 
the  emblenrs  and  ai^pellations  employed  by  plain- 
tiff, simply  to  l)reak  in  upon  the  trade  and  pi-olit  of 
the  latter,  in  such  cases,  notwithstanding  that  it 
may  ai)pear  to  the  court  that  the  trademark  claimed 
by  the  plaintiff  was  intended  and  calculated  to  de- 
(;eive  the  ]mblic,  the  cpiesthm  shoidd  be  .judged  of 
solely  as  between  the  immediate  parties,  and  the 
])ublic  should  be  left  to  its  own  guardianshij). 
IS.')?,  A\  y.  Hiipcrlor  CL,  S.  2\,  Fetridge  v.  Mer- 
chant, 4  A'iO.  Pr.  I."i0.  See  Fetridge  v.  W\^lls,  4 
Abb.  Pr.  144  ;  S.  C,  13  How.  Pr.  385. 

§  542.     The  legislature  having  passed  an  act  to 


In 


II  f 


I 

'ft  ■ 


174 


MlSRKPRESEXTATION. 


punisli  and  prevent  fraud  in  tlie  use  ol  false 
stamps  and  labels,  and  it  being  the  policy  of  the 
hiw  to  protect  the  rights  of  individuals  in  respect 
to  their  own  inventions,  labels  and  devices,  it  would 
seem  to  be  implied,  since  the  legislature  and  the 
courts  ai-e  thus  sedulous  to  protect  the  rights  of  in- 
dividuals in  respect  to  their  own  inventions,  labels 
and  devices,  that  such  individuals  should  not  them- 
selves attempt  or  allow  any  imposition  upon  the 
public  by  the  false  and  fraudulent  use  of  such 
labels,  devices,  names  or  inventi<ms,  for  the  sale  of 
sY)urious  or  simulated  articles.  Accordingly  held, 
that  it  was  an  oil'ense  against  the  spirit  of  the  law, 
equally  injurious  to  trade  ami  commerce,  and 
equally  an  inq)osition  upon  the  public,  to  palm  off 
si)uri()us  goods  under  the  cover  of  genuine  labels 
and  devices ;  and  that  c(M1  tracts  to  do  this  Avere 
cleai'ly  against  pul)lic  policy,  and  should  not  be 
upheld  and  enforced  by  the  courts.  A  contract  for 
the  sale  and  purchase  of  a.  quantity  of  empty  papers 
or  bags  for  seeds  with  the  plaintiff's  label  thereon, 
to  be  iilled  with  seeds  of  good  quality  by  the  pur- 
chaser, and  the  seeds  thus  put  up  to  be  offered  for 
sale  by  the  purchaser  of  siu*h  papers  in  a  specified 
county,  and  not  elsewhere,  was  therefore  held  to  be 
void.'  18.-)7,  r.Y.  Supreme  CL,  G.  T.,  Bloss  v. 
Bloomer,  i>3  Barb.  004. 

§  54'?.  If  the  pills  are  an  innocent  humbug,  the 
defendants  have  no  right  to  deprive  the  jjlaintiffs 
of  the  reputation  and  customers  which  the  plain- 
tiffs' money  has  been  the  means  of  acquiring  for 
the  pills  antl  themselves ;  especially  in  this  case, 
where  the  expenditure  was  in  a  great  measure  in- 
duced by  the  defendant.  It  does  not  appear  that 
the  pills  are  positively  injurious  ;  but  it  is  not  for 


n 


Misiieimm:si:xtat[<)X. 


I.) 


the  defendants  to  s;iy  that  tlie  phiintilfs  ai'e  hnm- 
l)Hij:,i2:in,ii:  the  public  and  ai-<'  therefore  not  entitled  to 
anv  I'clief  aiiainst  them,  when  the  defendants  liave 
been,  and  still  are  en^aucd  in  tlie  same  woi'lv.  As 
to  (he  public  :  if  the  jhIIs  are  an  innocent  humbug, 
it  is  doubtful  whether  it  is  the  dutvof  the  court,  on 
the  questions  of  the  propei'ty,  of  right  and  wrong 
lietween  the  parties,  to  stf^})  outside  of  the  case  and 
abridge  the  innocent  individual  liberty,  which  all 
persons  must  be  presumed  to  htive  in  common,  of 
sutF(M'ing  themselves  to  be  humbugged.  1800,  JV. 
r.  ^'iprnne  Ct.,  S.  T.,  Comstoek  v\  AVhite,  18 
Jlotc.  Pr.  4'Ji. 

§  r)44.  The  courts  Avill  not  interfere  by  injunc- 
tion, to  protect  a  party  in  tlie  use  of  trademarks, 
which  are  employed  to  mislead  the  j)ublic,  and  to 
deceive  them  by  fraudulent  representations  con- 
tained in  the  labels  and  devices  which  are  claimed 
to  constitute  wholly  or  in  part  such  trademarks. 
The  court  does  not  refuse  its  aid  in  such  a  case  from 
any  regard  to  a  defendant,  who  is  using  the  same 
eiforts  and  misrepresentations  to  deceive  the  pub- 
lic. Hence,  where  the  plaintiff's  label  was  calcu- 
lated to  induce  the  belief  that  the  article  in  the  box 
on  Avliich  it  was  pasted  was  manufactured  in  Lon- 
don, and  that  the  sole  proprietors  of  it  had  their 
place  of  business  in  London,  and  that  the  i)laintiff 
was  their  sole  agent  for  the  United  States,  when  in 
fact  the  article  was  made  in  New  York  and  the 
plaintiff  was  not  the  agent,  but  the  mannfactiirer 
and  proprietor,  and  injunction  was  denied.  18G0, 
iV.  Y.  Superior  Ct.,  S.  T.,  Ilobbs  v.  Francis,  19 
How.  Pr.  507. 

§  545.     While  it  is  true  that  a  court  of  equity 
will  not  interfere  preliminarily  by  injunction  and 


■ill 

M 


,■,141 


m 
m 


Sii| 

i*-Mi 

'[{^f 

176 


]Miski:pkesextatiox. 


protoH'f  a  person  in  .'in  ox  .-'-^  right  to  a  trade- 
luarlv  (>r  l:i!)o],  inanirestly  dovl'sj ,.  ::nd  int<Mi(l(Ml  to 
client  tlio  public  in  the  pnrcliase  of  tlio  article  to 
wliicli  it  niay  be  attached,  hy  representing  the  thing 
to  l)e  of  n  dilFei-ent  substtince  from  that  of  which  it 
I'eiiily  consists,  or  by  stating  nntrnllifully  its  origin, 
])i'op,er!ies  oi'  qnalilies  ;  or  wlion  the  articles  to 
which  they  are  affixed  nvc  of  very  donbtf  al  oliaracter 
and  (pmlity ;  nevertheless,  in  a  cjise  wliere  the 
phiintiifs  title  to  the  trademark  lias  been  legally 
established,  and  tlie  label  is  manifestly  one  not 
intended  to  delude  the  public  in  the  purchase  of  an 
article  l)y  making  any  representati(ms  or  asserting 
anytliing  in  respect  to  its  qualities  or  proi)erties, 
which  are  untrue,  and  is  not  used  with  any  fraudu- 
lent intent,  :iiu"i  the  public  is  not  in  fact  deceived, 
the  plaintiff  will  be  (Mititled  to  protection  b}'^  in- 
junction against  the  nse  by  defendant  of  similar 
labels,  although  the  plaintiff's  trademark  bears  a 
iictitions  name  as  th(^  name  of  the  manufacturers  of 
tiie  article,  rience,  Thomas  Nelson  Dale  Avas  pro- 
tected by  injunction  in  the  exclusive  use  of  the 
following  label:  "Courtria  Flax;  Thomas  Nelson 
&  Co.  Warranted  Fast  Colors,  et  16  oz."  1801,  i\^ 
r.  row.  /^'rv/.s^  G.  T.,  Dale  ?\  Smithson,  12  Ahh. 
Pr.  2:}7. 

i^  54(1.  A  trademark  describing  the  articles  on 
which  it  is  impressed  as  "patented"  is  a  proper 
on(>,  if  the  statement  was  true  at  the  time  the  mark 
was  adopted,  tliough  the  patent  has  been  allowed 
to  drop  before  its  expiration.  180J?,  1^.  (7.  Woo<T s 
CI.,  Leather  Cloth  Ccmipany  (Limited)  v.  Ilirschfeld, 
I  X^  tc  /*.  o.")!.  ]^nt  see  Leather  Cloth  Company 
(Limited)  r.  American  Leather  Cloth  Company 
(Limited),  hi.''ra^  §548. 


Mism:PKi;si:.\TATi()X. 


177 


§  5-17.  Whoro  tlis^  pl:iiuti(Ts  julvertiswl  tlieir 
peiiiiine  ns  the  oxti'tict  (^1'  the  "•  2si,ulit  J^looininii; 
Cereus,  distilled  IVom  this  niremid  bctuitiful  llower, 
frc^ni  which  it  ttdvtvs  its  njinn^,"'  and  the  ])iMriiiiH3 
was  an  alcoholic  coiiipoiind.  not  an  <'xtract  Iroin  tlu^ 
flower,^ — llcld^  that  this  was  a  deception,  intended 
to  impose  upon  the  pul)li(.'  by  excitiiuj  en;  iosity  !o 
learn  tin?  nature  of  tlie  i)ei-runie  of  the  ]:;re  and 
beautiful  ilower,  and  that  a  court  of  equity  would 
not  aid  him  in  carrying  it  on.  18(54,  I'iialon  r. 
Wright,  T)  Pliihidclphid,  4(U  (Penn.). 

i  r)48.  Misrepresentations  in  a  (I'ademark, 
amounting  to  a  fraud  njjon  the  public,  will  disen- 
title the  person  making  such  misrepres(Mitation  to 
in'otection  in  a  court  of  equity  against  a  rival  trader  ; 
and,  as  a  general  rule,  a  misstatement  of  any  mate- 
rial fact  calculated  to  imi)ose  upon  the  public,  will 
be  sufficient  for  the  purpose;  e.  r/.,  a  trademark 
representing  an  article  as  protected  by  a  patent, 
when  in  fact  it  is  not  so  protected,  or  a  ti-adcMuark 
falsely  representing  an  article  as  the  production  of 
an  artist  of  special  skill,  or  of  a  j^lace  of  sjxM'ial 
adaption.  ISO."),  UoiiHe  of  Lord.s,  Leather  (Jloth 
Company  (Limited)  v.  American  Leather  (.'loth 
Company  (Limited),  Oo  L<i}d  J.  Jt.  (:V.  S.)  CJi.  53  ; 
S.  C,  11  House  of  Lds.  Cases,  5213;  12  Law  T.  IL 
{N.  8.)  742  ;  S.  C.,  G  JVew  Ji.  209  ;  S.  C,  18  Weel-h/ 
11.  873;  S.  C,  11  Jurisl  {N.  K)  513  ;  affirming  S. 
C,  33  Law  J.  R.  (xY.  8.)  Ch.  199;  S.  C,  12  Wceldtj 
II.  289  ;  S.  C,  9  L.  T.  R.  {N.  S.)  55S  ;  S.  C,  10 
Jurist  (iY.  >S'.)  81 ;  and  reversing  S.  C,  1  //.  ct-  3L 
271 ;  S.  C,  32  Law  ,T.  R.  (.Y.  >S'.)  Ch.  721 ;  S.  C,  11 
Wccldii  R.  931 ;  S.  C,  8  Law  Times  R.  (lY.  K)  829. 

§  549.  The  plaintifTs  purchased  from  a  firm 
established  in  the  United  States,  knowledge  of  a 

13 


\   \,.:  r'i 


m. 


178 


MlSREPP.ESEXTATIOX. 


\  'ir 


^t 


secret  mode  of  making  crucibles,  wliicli  had  ncqiiired 
a  reputation  in  Ameiica  as  ''Patent  PluuibnLi'o 
(h'ucibles,"  although  the  process  had  never  l)e('n 
patented.  JfcM,  that  the  ijlaintitfs  could  not  tuaiii- 
tain  a  bill  to  resti-ain  others  from  pirating  this 
designation.  Tliat  the  use  of  tlie  word  "l^atent" 
by  tlie  plaintiffs  was  calcidated  to  mislead  and  do- 
iVaud  the  public  witli  whom  they  were  dealing,  and 
that  therefore  they  would  not  be  protected  in  its 
use.  18(50,  I':  C.  Wood,  Morgan  ??.  M'Adam,  :{() 
Lrfw  Jour.  (iV.  *S'.)  C/t.  228. 

§  Sno.  In  sn(;h  a  state  of  tlnngs,  the  court,  what- 
ever may  be  the  conduct  of  the  defendant,  does  not 
ask  whether  or  not  it  shall  interfere  to  resti'ain  a 
defendant,  but  it  must  see  in  the  first  instanc<», 
before  it  reaches  the  defendant's  case,  whether  or 
not  the  plaintiff  has  made  such  a  case  as  to  en- 
title him  to  the  court's  assistance.  All  that  the 
court  has  to  determine  is,  has  the  plaintiff,  who 
comes  to  seek  relief,  any  ground  whatever  for  ask- 
ing the  court  to  assist  him  in  protection  of  that  right 
which  he  sets  wp  ?  If  the  court  finds  it  to  be  a  light 
founded  upon  fraud,  the  court  says  it  cannot  assist 
a  person  in  carrying  on  a  fraud  ;  and  when  he 
comes  and  cannot  establish  to  the  satisfaction  of 
the  court  that  he  has  a  case  in  which  he  is  entitled 
to  relief,  he  is  told  that  when  he  has  entitled  him- 
self by  a  proper  description  to  protection  in  re- 
gard either  to  a  trademark  or  any  trade  designation 
of  that  kind,  he  will  be  assisted ;  but  until  then,  the 
court  must  disregard  altogether  any  supposed 
wrong  which  he  may  suffer  from  other  i^ersons  car- 
rying on  the  same  system  of  fraud  that  he  carries 
on,  imitating  him  in  the  false  description  of  what 


Misi:i:im:i;si:ntatiox. 


171) 


thoy  sell,  or  in  the  title  oC  the  compiiiiy  under  wliich 
they  iind  he  I'alsely  profess  to  exist.   1  hid . 

%  k)7A.  Dei'eiuhuit  procured  a  label  very  cldsdy 
resembling  plaintitrs"  and  ('oninien<'ed  to  attiicli  it 
to  a  peii'iiUK'  nianui'actured  by  him,  Jidoptiu^'  tln' 
same  niiuie  and  style  of  paeka,!j;es,  with  the  inten- 
tion of  counterfeiting  plaintill's'  ti'ademnrk,  as  U(^ll 
as  imitating  the  article  and  style  of  packages  used, 
and  with  the  design  of  appropriating  to  liiinself  the 
market  obtained  i'or  the  plaintiirs'  article.  The 
plaintiffs  in  connection  with  their  label  put  forth  a 
pulf  in  whi(;li  it  was  stated  that  "The  opoponax  is 
a  native  flower  from  ^[exico,  of  i-are  and  very  rirh 
fragrance,  from  whlrh  f/n's-  cr/rarl  f-s  r//,s7/7AY/," 
Sec.  Several  perfumers  on  the  part  of  the  defendant 
made  afTidavit  tliat  plaintiff's'  article  was  not  dis- 
tilled from  the  ffower  of  f)poponax,  but  was  a  com- 
2X)und  of  essential  oils,  cond)ined  with  i)ure  spirits, 
and  that  there  was  a  resinous  gum  in  the  market, 
of  a  disagreenble  odor,  but  no  flowers  of  opoponax. 
Plaintiff's  and  their  claimants  swore  the  perfume 
was  made  from  said  flower.  Held,  that  upon  this 
contradictory  state  of  the  evidence,  the  defendant's 
defense  that  the  plaintiffs  are  attempting  to  imi)ose 
upon  and  defraud  the  public  was  not  available  and 
that  defendant  should  be  enjoined.  18G7,  K.  Y. 
Supreme  Ct.,  G.  T.,  Smith  «.' AVoodruft',  48  Barh, 
438. 

§  552.  The  justice  and  morality  of  this  defense  is 
not  very  high,  in  the  present  instance ;  but  this  rule 
of  law  or  eqnity  has  been  recognized  in  several  cases, 
and  must  be  followed  if  the  case  is  brought  within 
its  application.  It  is  a  defense  that  ought  to  be 
suggested  by  the  court  in  some  cases,  and  |)robably 
wonld  be  in  all  cases  where  the  imposition  is  flag- 


I'.'i 
t 


■% 


r 


180 


MlSrwEPIlKSEXTATIOX. 


ft  (**■ 

„  Hi 
■f 

I!.t 


I'nnf.  For  instaiiro,  wIkh'o  a  quack  rompoinids 
noxious  and  da ngoroiis  drugs,  liurtfiil  to  the  liiiiiiaii 
coiislitiifioii,  and  advertist^s  tlieni  as  a  safo  andsiii-c 
I'cnicdy  foi'  disease;  or  wlieji  some  ehailatan  a\'alls 
liimselt'ol'  the  pi'ejndire,  superstition,  or  ignoi'aiicc 
<)[  some  ])oition  of  tlie  public,  to  palm  oil'  a  woitli- 
less  article,  even  when  not  injurious,  the  case  falls 
beneath  the  dignity  of  a  court  of  justice  to  lend  its 
aid  for  the  i"edi'(^ss  of  sucli  a  paity,  Avho  has  been 
intei'fenMl  Avith  by  the  imitations  of  another  (]uack 
or  chai'latan.  But  tlu;  suggestion  comes  witli  a 
])nor  grace  from  one  who  lias,  by  tlie  imitation, 
b(MMi  guilty  of  the  same  fraud  or  imposition  upon 
the  i)ublic,  if  such  it  happens  to  be.  Per  Lkoxaim). 
r.  J.    fh/(7. 

^  ,").");?.  A  person  wlio  in  and  bj'  his  tradmruk 
makes  representations  which  deceive  the  public,  can- 
not appeal  to  the  equitable  interposition  of  a  (30urt 
of  eqTiity  to  restrain  the  use  of  such  decejitive 
ti'ademark  by  another.  But  a  mere  false  oi'  exag- 
gerated statement  in  an  advertisement  of  tlie  manu 
factured  article,  and  not.  contained  in  the  ti-ademark 
itself,  tending  to  recommend  its  use  to  the  public, 
wdll  not  deprive  the  owner  of  a  right  to  be  protec^ted 
in  the  exclusive  nse  of  ]iis  ti-ademurk.  Hence, 
where  an  advertisement  of  the  plaintifFs  artich^ 
(called  "Mrs.  Winslow's  Soothing  Syrup")  con- 
tained these  words  :  "  Mrs.  Winslow,  an  experi 
enced  nurse  and  female  physician,  i)resents  to  the 
attention  of  mothers  her  Soothing  Syrup,"  whereas 
the  truth  was,  that  Mrs.  Winslow  liad  been  for 
many  years  dead,  and  the  defendant  denied  that 
Mrs.  AVinslow  had  been  an  experien(;ed  nurse 
and  female  physician  :  Ildd,  that  the  statements 
in  said  advertisement  did  not  affect  the  x>l!»intiirs 


m 


MlSKEPKESENTATIOX. 


381 


Imdetnat'k  one  w;iy  or  tlio  other.  1808,  X.  V. 
Com.  Pic  (US,  (J.  7'.,' Curtis  6'.  13ryun,  2  Dnhi.  :5ii. 
and  ;}G  How.  Fr.  \Vi. 

^  5,")4.  A  person  who  has  fraudule^itly  iiiiitiilfd 
the  trademark  oi'  anothei',  and  oll'ered  I'oi'  sale  liis 
own  i;*oods  as  those  of  Ww  owner  of  th(!  tiadcnuiik, 
can  not  he  heard  to  raise  the  objection  that  tlu'  hit- 
ters <2;i)ods  are  injurious  to  health.  Tlie  acts  ol'  the 
party  conclude  him.      Ibid. 

%^)o7).     The  ground  on  which  the  jurisdictional' 
equity  in  trademark  is  vested,  is  the  i)rom()tioii  ol' 
honesty  and  i'air  dealing,  because  no   one  has   a 
right  to  sell  his  own  goods  as  the  gO(jds  of  another. 
There  is  no  class  of  cases  to  wliich  tlie  maxim  "  lie 
who  ct)mes    into    eqnity   must    come   with    clean 
hands"  can  nnn-e  properly  be  applied.     A    ])a!ty 
Avho  attempts  to  deceive  the  xjublic  by  the  use  oi'  a 
trademark,  which  contains  on  its  face  a  falsehood 
as  to  the  place  where  his  goods  ai'e  nianul'acturtMl. 
in  order  to  have  the  benelitof  the  reputation  which 
such  goods  have  accpured  in  the  market,  is  guilty  of 
the  same  fraud  of  which  he  comphiins  in  (h'Tciul 
ants  who  imitate  his  mark,     lie  can  liave  no  claim 
to   tlie  extraordinary  interpcxsition  of    a  tribunal 
constituted  to  administer  ecpdty,  for  the  pur])()st_-  of 
securing  to  him  the  profits  from  his  fraudulent  act. 
It  is  not  necessary  that  any  one  person  has  been 
actually  deceived  or  defrauded  ;  it  is  enough  that  it 
is  a  misrepresentation  calculated  to  have  that  elfect 
on   the   uuAvary  and  unsuspicious.     A  trademark 
on  Spanish  cigars  made  in  New^  York,  indicated  that 
they  were  made  in  Havana.     Held,  that  an  injunc- 
tion would  not  be  granted  to  restrain  a  counterfeit 
of  the  trademark.     1809,  Supreme  Ct.  of  Pa.,  Pal- 
mer 0.  Harris,  CO  Pcnnsylcania,  15G. 


I 


>f 


m 


182 


MiSKKlMlKHKNTATIOX. 


§  ru)C).  Tlio  use  of  tlio  word  "  pate'iit "  as  [Kii't  of 
rho  (bvsci'lplioii  ill  a  laix'l  oi*  tradcmai-k  of  ji^ood.s 
not  prot('('r(!d  by  a  patent,  is  not  siicli  a  inisr(>[)i-e- 
siMitalioii  as  to  depi'iv»;  tin.'  owihm"  of  Ids  riglit  to  I)p 
l)i()tiH!t(Hl  a,t;"aiust  an  iid'i'in,i;(^iiient  of  liis  label 
wiierc!  tlu;  ;j;oods  liavc,  from  the  iisai^'e  of  many 
years,  ac(iiui'ed  the  desi<^iiation,  in  lh«;  tra'l<\ii'en- 
erally,  of  patent.  18o;),  V.  C.  Jajiics''  Conrf^  Mar- 
shall r.  Ross,  Lam  It.  8  Eq.  CCA  \  S.  C,  21  Jmw 
Tlntr.s  11.  (xY.  H.)  2(50;  S C,  17  Weekh/ li.  1080  ;  S. 
(J.,  ;U)  Law  .J.  R.  {X.  >^.fch.  22r). 

)^  k)Tu.  'V\\(\  plaintilfs  institut<nl  a  suit  to  restrain 
the  defendant  from  using  thc^  name  ''  The  Pall  Mall 
Ouinea  Coal  Company  "  in  Pall  Mall.  The  defend- 
ant, amongst  other  grounds  of  defense,  set  np  a 
case  that  the  i)lainriirs  liabitually  served  short 
w<'ight  npon  their  customers,  and  deceived  their 
customers  also  in  tiie  character  of  the  goods  sup- 
plied, ^^oiihle,  if  these  hllegations  had  been  sup- 
ported by  the  evidence,  which  was  held  not  to  be 
the  case,  they  wf)uld  liave  disentitled  the  plaintiiVs 
to  come  to  the  ctmrt  of  chancery.  1800,  Jir/'orc  Lord 
JksHw  (Jijf'ord  oil  appeal.,  Lee  t.  Haley,  18  Wcelchf 
Ji.  242;  S.'C,  L.  li.  T)  Ch.  inn;  S.  C,  22  Law  T.  (X 
.^.)2:)\\  !S.  C,  80  Law  J.  li.  {JW  /^.)  Ch.  284.  But 
see  S.  C,  Be/ore  V.  O.  Jlal/n.s\  18  Weeld>i  11.  181, 
S.  C,  21  Law  Times  {N.  >S'.)  o4G. 

^  .O.kS.  Although  where  suit  is  brouglit  for  the 
infrini2:ement  of  a  trademark  whicli  is  itself  a  false- 
hood  and  calculated  to  deceive  and  mislead  th(^ 
])ul)lic  as  to  the  true  character  of  the  ai-ticle  sold 
under  it,  equity  will  not  relieve  ;  yet  where  there  is 
no  intention  to  deceive  and  no  falsehood  is  used, 
an  injuncticm  will  issue.  ^Vliere  the  trademark 
discloses  truly  the  place  of  manufacture  and  sale 


MlSKKlMIKSKNTATloN, 


I8;j 


#v 


of  flio  i:,()(hIs,  and  sii))sta!ili:illy  the  tnio  (>\vn('rslii[t 
of  tliiMu,  tlif>  i'acl  that  tliii  name  oil  ilio  label  is  not 
the  exact  nani«^  of  the  niannractni'iTs,  owinu'  to 
('lian,!;vs  in  the  pci.sons  inannractnrini;'  al'lci'  the 
inaniiracrm*'  was  coniincnci'd,  will  not  dehar  lln' 
plaintill's  (»t'  their  injnnction.  Ihbl^  that  the  dillVr- 
eiice  1)etu('eii  .los.  Dixon  cS:  Co.,  as  ]»iinted  on  the 
labels  and  the  Jos.  Dixon  Cnicibh;  Company,  the 
iiaint'  ol"  the  mannl'actniei'  and  vender  ol'  the  ^n»ods. 
was  not  ol"  such  a  character  as  to  destroy  tin;  ])lain- 
tillV  ri-'-ht  to  ecinitahle  relief.  1870,  CV.  of  Com. 
]^l('f/s.,  PJt'tl.  P(i.,  Dixon  Crucible  Co.  /'.  Gng^cn- 
helm,  2  lircicslcr,  ;}21,  Pciin.  ;  S.  C,  7  iV//7r^'  40S. 
^j  TmU.  a  joint  st(!<'k  company  took  its  name 
from  the  names  ol'  I'onr  of  its  principal  stock- 
holders, ^subsequently  an  act  of  the  legislature 
was  ])assed  re(purin<j,'  the  names  of  coi'[)()rations  to 
bei^in  with  the  word  "The"  and  end  with  the  word 
"Company;"  but  nothing  in  the  act  reipui'ed  a 
change  in  the  names  of  existing  corpoi-ations.  The 
retention  of  a  name  without  such  words,  thereby 
indicating  a  partnei-sliip  instead  of  ii  corporaticm, 
after  the  ])assage  of  the  act,  held  not  to  Im^  such  a 
misivpresentation  as  to  render  it  inequital)le  for  a 
court  of  equity  to  protect  the  corporation  in  the 
use  of  its  name  against  infringement  by  a  rival 
comjjany.  After  a  period  of  more  than  iifteen 
years,  the  persons  whose  naniesapi)eai-ed  in  the  cor- 
porate name  of  such  joint  stock  company  ceased 
their  connection  with  the  corporation.  The  reten- 
tion of  the  name  subsequently,  held  not  to  imi)ort  a 
representation  that  the  company  still  had  the  bene- 
iit  of  the  skill  and  experience  of  the  peisons  named. 
1870,  Siqjrenie  Court  of  Errors  of  Conu.^  Holmes 


MJ-'.| 


•   1  'I 


tea 


u »( 


184 


MltjUEPllESENTATIOX. 


}lHi 


'^^^1 


?\  Holmes,  Bootli  &  Atwood  Maiif.  Co.,  37  ConrwC' 
ilriil,  278. 

^  r)U().  Trademark  cases  will  be  adjudicated  only 
upon  the  rights  oi'  parties  before  the  court,  and  as  be- 
tween their  contlit^ting  claims,  and  not  Avith  a  view 
to  the  guardianship  ol"  the  public  npon  the  merits 
or  demerits  oi  nosinnna,  except  in  cases  where  in- 
jury to  the  pul)lic  health  or  morals  enters  into  the 
ingi-edients  of  tlie  allegations.  1871,  Supreme  Ct. 
of  Ua.,  Ellis  ..  Zeilin,  42  Ga.  91. 

§  501.  The  conrt  of  chancery  will  not  interfere 
by  injunction  to  restrain  the  imitation  of  a  trade- 
niai-k,  if  there  is  false  representation  in  the  trade- 
mark, or  if  the  trade  itself  is  frandulent.  And, 
sei/iblc,  such  false  representation  or  fraud  woidd  be 
a  good  defense  to  an  action  at  laAV  for  imitation  of 
the  trademark,  on  the  ground  that  ex  iurj)!  t'oum 
■non  oritur  actio.  But  a  collateral  misrepresenta- 
ti(^n  by  the  owner  of  the  trademark  will  nor  dis- 
entitle him  to  relief,  either  at  law  or  in  e(|uity. 
1872,  Ford  i\  Foster,  Law  11.  7  Ck.  Ap.  CV/.v.  Oil  ; 
S.  C,  27  L.  T.  R.  (A;  S.)  210  ;  S.  C,  41  h.  J.  IL 
{iX.  K)  Ch.  082;  S.  C,  20  W.  11.  818;  reversing 
S.  C,  (Bacox,  V.  C.,)  20  W.  n.  311. 

§  502.  In  a  case  where  the  plaintilf,  whose  trade- 
mark was  "Fv)rd's  Eureka  Shirt,"  had  falselv 
±wpresented  in  his  invoices  and  in  a  few  advertise- 
ments that  he  was  a  "patentee  "  of  the  shirt :  IMd, 
that  snch  false  representation  was  not  suflicient  to 
prevent  him  from  sustaining  an  action  at  hiw  ;  and 
that,  his  right  at  law  being  clear,  he  was  entitled  to 
an  injunction  in  cliancerj\     Ibid. 

%  503.  AVhere  fraud  and  falsehood  on  the  part 
of  the  X)laintilf  are  relied  on  as  a  forfeiture  of  his 
title  to  relief  in  equity  for  a  viohition  of  a  trade- 


MiSRKPllESEXTATIOX. 


;-.) 


mark,  it  must  result   from  direct  prooC,  aul  ii  >: 
mere  crimination  or  argument.     187:2,  U.  S.  ('ircn'l 
CI.    Va.,   Blackwell    c.    Armistead,    5    Am.    Lmo 
Times,  ST). 

^  nO-l:.  Trademarlvs  intended  to  deceive  ;ind  |iia;'- 
tice  a  fraud  upon  the  public,  will  not  be  protected 
by  a  court  of  equity.  Cf.  W.  Laird  institutinl  t!iis 
action  against  J.  B.  Wilder  &  Co.  to  enjoin  them 
from  counterfeiting  his  trademark.  Injunction  ic- 
fused.  In  tins  case  the  design  of  the  botlk%  {nu! 
the  label  of  "Laird's  Bloom  of  Youth  or  Liquid 
Pearl,"  a  comjwund  prepared  and  sold  by  (f.  W. 
Laird,  were  unwai-rantably  adopted  by  J.  ]?. 
Wilder  &  Co.,  to  misknid  the  public  by  inducing 
the  belief  that  the  compound  prepared  and  sold  by 
them  was  identical  with  tliat  of  (t,  W.  Laiid,  and 
the  imitation  was  so  nearly  exact  as  to  be  \vo!l 
calculated  to  produce  that  eifect.  On  the  J'acis 
the  court  held,  that  the  plaintilf  in  putting  his 
conipound  on  the  market  as  he  did,  witli  his  ex- 
press as  well  as  implied  assurance  to  the  public 
that  it  was  "free  from  all  mineral  and  poisonous 
substances,"  deliberately  engaged  in  the  perpetia- 
tion  of  a  fraud,  which  in  a  court  of  equity  slutuld 
be  rebuked  ratljer  than  upheld  or  protected.  To  a 
party  thus  presenting  himself,  a  court  of  equity, 
adhering  to  the  maxim  that  ''^ he  who  n.sli.s  tquii;/ 
must  come  lolth  pure  Iiand.s',''^  will  not  lend  its  aid 
when  the  object  to  be  effected  is  to  secure  to  himself 
the  exclusive  privilege  of  deceiving  the  publi(;  in  a 
particular  way,  although  in  doing  so  it  might  pre- 
vent another  equally  guilty  from  committing  the 
same  wrong*.      1872,    Ct.    of  Appeals,   Kc/tU 


//, 


Laiid  V.  Wilder,  9  Bush,  V^l. 


g  5Gj.     Equity  will  not  j^rotect  a  tradenuiik  which 


Mi 


i    '■! 


'   ■'   *-'*^'j 


iM 


i^fwnrsr- 


18G 


MlSllEPllESEXTATIOX. 


'ill 


(    m 


(l(»('(Mves  the  pultlit* :  l)u!  tliat  deception  need  not  be 
oi  .siicli  a  cliaracter  as  t(;  Avork  a  positive  injury  to 
2)Ui(']iasers,  nor,  on  the  otlier  hand,  will  the  l'a(;t 
that  some  erroneous  impression  may  be  received  by 
the  public,  be  suil'ered  to  destroy  the  validity  of  the 
trademark.  If  the  repi'esentation  of  the  trademark 
does  not  in  fact  mislead  the  X)ublic,  and  may  be  un- 
dei'stood  in  any  I'easonable  sense  as  substantially 
true,  the  trademark  will  be  entitled  to  X)rotection. 
1872,  >Sf(p.  CL  of  Errors,  Meriden  Britannia  Co.  v. 
Parker,  39  Coun.  400. 

§  noo.  As  it  appeared  that  the  Rogers  brothers 
superintended  the  petitiimers'  spoon  and  fork  man- 
n factory,  directed  as  to  the  style  and  quality  of 
such  goods,  and  had  the  general  sux)ervision  of  the 
manufactui'iiig  and  sale  thei'eof,  it  was  held  that 
the  repi'esentation  contained  in  the  trademark  cm 
the  goods  manufactured  by  the  Meriden  J3ritannia 
Company,  that  the  Rogers  brothers  were  the  nianu- 
factureis,  was  true  in  a  certain  sense,  to  wit :  that 
the  goods  were  the  production  of  their  skill,  judg- 
ment and  experience,  and  therefore  the  misrepre- 
sentation, if  any,  was  not  of  such  a  character  as  to 
defeat  the  petitioners'  claim  to  the  exclusive  use  of 
the  tiademark.  Ibid. 

%  oOT.  11  si'ems,  that  a  business  wdiich  is,  to  a 
certain  extent,  a  fraud  upon  the  public,  such  as  the 
j)alming  oif  of  an  alcoholic  beverage  in  common 
use  exclusively  as  a  medicine  and  as  a  specific  for 
certain  diseases,  under  a  name  not  generally  under- 
stood by  the  comnuuiity,  is  not  entitled  to  the  aid 
of  a  court  of  equity,  and  that  the  name  will  not  be 
])i'otected  as  a  trademark.  Cuuiuii,  Ch.  J.,  1874,  N. 
y.  Court  of  Appeals,  AVolfe  r.  Burke,  50  i\^.  Y.  115. 

g  5(50.     Complainants  used  to  distinguish  jars,  the 


Miski!:pkp:sentltiox. 


187 


designations  ^^J/ason's  Pa/enf,  jVoo.  oO///,  18r)8,"' 
''Masons  Improved,"  "The  Mason  Jar  oi'  18:)8." 
It  appeai'ed  tliat  the  jai's  liad  been  protected  by  a 
l)atent  that  liad  been  adjudged  to  be  invalid.  7/c7r/, 
tliat  the  designations  had  a  tendency  to  mislead  the 
l)id)lic,  and  could  not  therefore,  be  protected  as 
trademaiks.  In  respect  of  the  designation  "•  7V/t' 
Million  Jar  of  1872,""  the  (jbjecticm  held  not  to  be 
applicable.  1874,  U.  S.  Circuit  CI.,  Pcun.,  Con- 
solidated Fruit  Jar  Company  c.  Bortlinger,  2  Am. 
Law  Tlnii.s{X.  aS'.)o11 

g  570.  S.  C,  deceased,  andphiintitf,  G.  C,  jointly 
took  out  letters  patent  for  a  lilter,  which  they  al- 
lovved  to  drop,  but  continued  to  allix  to  their  liltei'S, 
"CI.  C.\s  imi)roved  i)ateiit  gold  medal,  self-cleans- 
ing, rapid  water  filter,  Boston."  Defendant  com- 
menced to  sell  inters  of  sinular  shape,  inscribed 
"  S.  C.'s  patent  pi-ize  medal,  self-chninsing,  rapid 
water  lilter,  imi^roved  and  manufactured  by  AV^.  P. 
&  Co.*"  Iftld,  that  plaintilfs  had  acquired  aright 
to  protection  of  their  inscription  as  a  trademark, 
and  that  the  use  of  "  patent ''  therein  did  not  avoid 
such  right.  1870,  Ch.  Die.  Vice  Ch.  Bacon,  Cheavin 
T.  Walker,  ?>:)L(fiD  Times  {N.  S.)  707;  S.  C,  4G Law 
J.  11.  {X.  N.)  Ch.  20."). 

§  r)71.  The  plaintiffs'  trademark  or  label  was 
affixed  to  bottles  containing  quantities  of  brandy 
less  than  pints  and  quarts.  Nothing  appeared 
upon  the  bottles  or  the  trademark  to  indicate  that 
the  bottles  contained  quarts  and  pints,  and  there 
was  nothing  in  their  appearance  or  form  to  deceive 
or  impose  u^xm  any  one.  They  were  transparent, 
and  any  one  h»oking  at  them  could  see  the  quantity 
they  contained.  It  did  not  aiDpear  that  the  bottles 
in  the  trade  were  ever  used  as  the  measure  of  quan- 


m 

'SI' 


\  illil 


n 


iidm 


188 


MlSHEPItES]-:XTATIOX. 


I  .,>( 


tity,  or  that  tliey  were  ever  sold  or  bouglit  as  actu- 
ally coiitaininij;  quarts  or  pints.  The  phiintilt's  were 
numurac'tuieis  and  wholesale  dealers  in  the  brandy, 
and  the  bottles,  wlien  inJi)orted  in  this  country,  were 
entered  at  the  custom  house  with  a  statement  of 
the  true  quantity  (Contained  in  them.  There  was 
no  proof  tluit  any  purchasers  from  the  i)laintilfs 
purchased  ujion  tlie  faith  that  the  bottles  actually 
contanied  quarts  and  jHUts,  or  that  such  purchaser 
did  not  understand  perfectly  their  capacity.  There 
was  no  i)roof  that  the  plaintiffs  ever  represented  to 
any  one  that  tlie  bottles  contained  quarts  and  pints, 
or  that  they  ever  deceived  or  imposed  ux)on  any 
one,  or  that  any  dealers  ever  sold  tlie  bottles  as 
containing  more  than  by  measure  they  actually 
contained.  It  did  not  appear  that  the  trademark 
Avas  used  or  could  be  used  by  plaintiffs  to  inq)ose 
upon  or  deceive  any  one,  or  that  they  carried  on 
their  business  for  a  dishonest  i)urpose,  or  in  such 
way  as  to  cheat  or  defraud  any  one.  It  was  not 
questioned  that  the  brandy  was  genuine  and  just 
what  it  purported  to  be,  and  althoiKjli  in  the  coia- 
'plaiiit  Uie  hollies  icere  described  as  quart  and  'piid 
bottles^  they  appeared  to  be  of  the  ordinary  size 
used  in  the  liquor  trad(\  IMd^  that  it  might  be 
assumed  that  the  brandy  in  the  bottles  was  sold  by 
the  bottle  and  not  by  measure.  That  as  plaintiffs 
shipped  their  brandy  to  different  parts  of  the  woiid 
the  fact  that  a  quart  ditt'ers  in  size  in  various  coun- 
tries showed  it  to  be  impracticable  to  use  bottles 
actually  containing  measure  quarts  and  i)ints.  That 
as  the  brandy  was  i)ut  up  in  bottles  of  convenient 
size,  and  sold  by  the  bottle  in  this  country,  they 
might  be  called  quart  and  pint  bottles  because  they 
were  nearest  in  size   to   those  measures,  and  the 


MlSr.EPllE>;F.XTATrOI*T. 


180 


designation  wiis  sufficiently  aornrate  for  the  pur- 
poses of  ti'ade,  and  tliat  no  one  would  be  necessarily 
oi-  actually  deceived.  That  th(^  case  \v:is  thei'elore 
jiot  one  \vli('ie  it  could  be  said  that  plaintill's  cnnio 
iulo  court  with  nnclean  hands  and  g'uilty  conscieu- 
(!es,  and  must  therefore  be  denied  e^xuitable  relief; 
that  the  case  was  not  one  where  the  trachnnark  was 
used  to  deceive  or  impose  npcm  the  pnblic,  or  whei'e 
it  was  nsed  npon  a  spurions,  worthless  or  deleteri(ms 
oomponnd.  or  where  the  bnsiness  in  which  it  was 
nsed  Avas  ciirried  on  systematically  in  a  dishonest 
and  fraudulent  way ;  in  such  cases  conrts  will  not 
lend  their  aid  to  protect  trademarks.  Jndgment 
of  couit  below  denvini!;  injunction  on  irround  of 
misrepresentation  rcn-ersed,  and  a  new  trial  ordered. 
1877,  ^\  V.  Court  of  Apj^pnls,  Heimessy  ii. 
Wheeler,  not  yet  reported ;  reversing  S.  C,  51 
I/ow.  Pr.  457. 

§  072.  The  plaintiffs  claimed  the  excbisive  right 
to  the  use  of  the  word  "Capcine"  asaised  in  tlieir 
trademark  "  l^enson's  Capcine  Plasters,"  and  tiled 
a,  l)ill  to  restrain  tin?  defendants  from  nsin"'  the 
word  "•  Capsicin  *"  for  a  similar  article.  "  Althongh 
the  plaintill's  may  have  omitted  the. fraudulent  and 
deceptive  and  nntrne  language  from  their  circulars 
before  this  suit  was  commenced,  yet  if  they  have 
any  i^i-operty  in  their  trademark  which  they  claim 
title  to,  they  acquired  such  propei'ty  by  the  use,  for 
a  consid(M-able  time,  of  such  language  in  the  circu- 
lars which  accompanied  the  articles  they  sold,  and 
in  respect  to  which  the  trademark  is  claimed.  iSucli 
language  Avas  to  the  effect  that  'a  celebrated  chem- 
ist had  recently  discovered  a  vegetable  principle  of 
great  value,  and,  prior  to  making  it  generally  known, 
had  introduced  it  into  hospitals,  and  had  generously 


'ft 


ill 


:,  .hi 
I..  !.»;■;■ 

if: 


fW 


fr 


I'  I, 


190 


Xame. 


extended  its  use  to  the  most  successful  physicinns  ; 
tliat  tlie  Ihittering  and  astonishing  results  wliich 
cluiracteii/ed  its  action,  at  once  stamped  it  as  tlie 
most  I'emai'kahle  principle  ever  discovered;  that 
tliis  powerful  remedy  was  named  Capcine,  and  that 
it  was  used  in  plasters  prei)ared  by  the  plaintiil's, 
and  calh'd  Benson's  Capcine  Plasters'.  A  regis- 
tered trademark  is  claimed  in  the  word  '  Capcine.' 
Courts  of  eiiuity  refuse  to  interfere  in  behalf  of 
poT'-i^s  wlio  claim  jn'operty  in  a  trademark  ac- 
c  ,ii  -v.  ^v  advertisini^'  their  wares  under  such  repre- 
f c,\iafoiis  as  those  above  cited,  if  they  are  f.alse. 
T/^  is  shown  there  is  no  such  article  as  Capcine 
know  '  in  . 'emistiy,  or  medicine,  or  otherwise. 
Tlie  authonl^ie?  Ave  clear  that  in  a  case  of  this 
desci'ipfion  a  plaintiff  loses  his  right  to  claim  the 
assistance  of  a  court  of  equity.  The  motion  for  an 
injunction  is  denied."  1877,  U.  S.  Circuit  CL  JV. 
r.,  Seabury  v.  Grosvenor,  nnrei)orted. 

See  also  §§  152,  225,  824. 


i.r- ' 


NAME. 


I.  In  general,  §  580,  ct  seq. 

II.  How  far  one  may  be  restrained  from  the  use  of  his 
own  name  in  business,  §  000,  et  seq. 

III.  Corporate  name,  §  0:^0,  et  seq. 

IV.  Descriptive  name   and  words,  §    640,  et  seq.  (and 

see  Words,  §  1010,  c^  seq.). 
V.  Faney  name,  ^  680,  et  seq. 
VI.  Geograi)liieal  name,  §  705,  ct  seq. 
Vir.   Patentee,  name  of,  §  731,  et  seq. 
VIII.  Partnership   name,  see  PARTNERsmp,  §  780,  ct  seq. 
IX.  Names  of  huiMings,  see  Buildings,  §  160,  et  seq.y 
Sicixs,  §  940,  et  seq. 
X.  Kom  de  plume,  see  §  886. 


*•   n 


■:         Hi 


m 


[Jn] 


Namk.         [r/cncral.l 


191 


I.     In  general. 

§  nSO.  The  i)rovisi()n;il  directors  of  a  joint  stock 
company,  liaving,  without  the  authority  of  the 
phiintiif,  publislied  a  prospectus,  stating  him  to  1)0 
a  trustee  of  tiie  company,  were  restrained  by  in- 
junction. lS-17,  liolls  Court,  Jlouth  d.  Webster, 
10  Bear.  oGl. 

§  nsi.  A  court  of  equity  will  protect  by  injunc- 
tion tlie  name  of  .an  enterxuise  undertaken  for  the 
amusement  of  the  public.  The  use  of  tlie  name 
"Christy's  Minstrels"  pi'otected.  18.-)G,  jVcio 
York  i^uprtnie  Ct.  /8'.  7',  Chiisty  i\  Murphy,  12 
IIou\  Pr.  77. 

§  i)8"2.  It  is  to  protect  a  party's  right  of  selling 
liis  own,  that  tln^  law  of  trademarks  has  been  in- 
troduced. The  right  must  include  the  privilege  of 
selling  to  all,  to  the  incautious,  as  well  as  to  the 
cautious.  Any  false  name  that  is  assumed  in  imita- 
tion of  a  prior  true  name,  is  in  violation  of  this 
right,  and  the  use  of  it  will  be  restrained  by  in- 
junction. Hence  the  use  of  the  word  "ccmipany" 
in  the  mark  "Brooklyn  White  Lead  &  Zinc  Com- 
pany," by  the  defendant,  who  had  no  such  company, 
in  imitation  of  the  trademark  of  the  plaintilt,  an 
inc'orporated  company,  was  restrained  by  injunc- 
tion. 1807,  N.  Y.  Sirpreme  Ct.  G.  T.,  Brooklyn 
White  Lead  Company  i).  Masury,  2*5  Barh.  41G. 

§  083.  Whether  a  manufacturer  can  acquire  an 
absolute  right  in  a  name  as  a  name  merely,  and 
whether  the  w^ords  or  name  "  Aramingo  Mills"  can 
be  i)rotected  as  a  trademark,  doubted.  18G0,  Ct.  of 
Com.  Pleas,  Phil.  Pa.,  Colladay  v.  Baird,  4  Phil. 
139. 


*  :\ 


I 


192 


im 


Naime. 


[general.'] 


I  .. 


Yi\ 


,f' 


,  f 


I   I 


§  n84.  It  would  1)0  impossible  to  lay  down  any 
genou'iil  rule  as  to  when  i)orson.s  in  business  are  en- 
titled to  nse  the  names  oi'  others  in  the  same  busi- 
ness. TJH!  ronrt  has  always  purposely  avoided  do- 
ing so,  that  they  might  not  thei-eby  open  a  door  to 
fraud.  ]?ut  th(5  general  principle  is,  that  the  court 
will  always  interfere  where  there  has  been  a  fraudu- 
lent use  of  the  name.  Before  the  court  will  inter- 
fere to  prevent  one  trader  from  making  fraudulent 
use  of  th(3  name  of  anothei',  it  requires  to  be  satis- 
fied not  only  tliat  the  course  taken  by  the  defend- 
ant is  calculated  to  deceive  the  i)ublic  but  that  rej)- 
lesentation  has  been  made  to  him  by  the  plaintiif 
that  it  will  have  that  effect.  If  after  such  represen- 
tation the  defendant  persists  in  continuing  the  use  of 
the  name  in  the  same  mannei',  then  on  the  plain  tiffs 
bringing  the  case  before  the  court,  the  court  would 
be  justified  in  saving  that  that  which  Avas  not  fraud- 
iilent  at  first  became  so  bj^  the  defendant's  jiersist- 
ing  in  the  same  course,  and  that  therefore  the  plain- 
tiff would  be  entitled  to  relief.  18G,"),  Vice  Ch. 
Wood's  Court,  Williams  v.  Osborne,  13  L.  T.  {N. 
S.)  498. 

§  o8.").  The  actual  physical  resemblance  of  the 
two  marks  is  not  the  sole  question  for  the  court,  for 
if  the  plaintilf's  goods  have,  from  his  trademark, 
become  known  in  the  marlcet  by  a  particular  name, 
the  adoption  l)y  the  defendant  of  a  mark  or  name 
which  will  cause  his  goods  to  bear  the  same  name  in 
the  market,  is  as  mucli  a  violation  of  the  plaintiff's 
rights  as  the  actual  copy  of  his  mark.  18G0,  Be- 
fore Lord  Chancellor  Cr.vn'WORTII  on  appeal, 
Seixo  V.  Provezende,  Laio  li.  1  Ch.  192  ;  S.  C,  12 
Jurifil  {N.  8.)  215  ;  S.  C,  4  WeeJd?/  li.  357  ;  S.  C, 
14  J  Aim  Tlmea  {N.  S.)  314. 


im 


Name.         {r/enrral.'\ 


193 


Vf  t 


§  nSG.  Althonii'h  tlio  dof(Mifl:nit  mny  h'.wo  somo 
title  to  the  iisn  oC  ;i  iiiai'lv  or  iiaiiic,  lie  wiii  not  Ix' 
jiistili(Ml  in  adopting;  it,  if  the  i)rol)al>l('  oilVct  ol'  his 
so  doino:  is  to  lead  the  piildic.  to  su])])os(\  thai  in 
liui'oliasinu'  his  goods  they  are  purcliasini;'  tliose  oL" 
the  plaiiitiir.   I  hid. 

§  oST.  A  ])erson  may  acquire  a  valid  tiadeniai-k 
in  his  own  Christian  name,  as  a  desiirnation  of  liis 
place  of  business,  which  will  be  pi'otected  by  in- 
junction. X.  v.  i^iiperlor  Ct.^  S\  7\,  Sraudinger 
V.  Staudin<i'er,  10  Lcf/.  ////.  Sn. 

^^  588.  'J'he  name  of  an  inventor,  or  discovei-er.  or 
nianufactui'er,  maybe  employed  as  a  ])ait  of  a 
trademark.  It  may  give  to  other  paits  of  the  ap- 
pellation a  distinctive  character,  or  rathei-,  it  may 
make  words  distinctive  that  without  the  name  would 
not  be.  The  words  "Dr.  J.  M.  Lindsey's  lm]>i"oved 
Blood  Searcher"  were  held  to  be  a  legitimate  trade- 
mark, and  entitled  to  protecti(m  in  a  coui't  of 
equity.  1807,  Sup.  Cf.,  Pen  v.,  Fulton  v.  Sellers,  4 
Brews'.  42. 

§  nSO.  No  right  can  be  absolute  in  a  name  as  a 
name  merely.  It  is  only  when  that  name  is  i)i'int(Hl 
or  stamped  npcm  a  particular  article  and  tlius  l)e- 
coines  identilied  with  a  particular  style  and  quality 
of  goods,  that  it  becomes  a  trademark.  Hence, 
therefore,  the  fact  that  the  defendant  had  suggested 
the  name  of  "  Heroine,'"  to  theplaintilf  for  his  jars, 
was  held  to  be  inmiaterial,  when  he  had  not  used 
the  name  until  after  the  x>lnintiff  had  used  it  and 
established  for  it  a  reputation  and  value— and  the 
defendant  was  enjoined  from  the  use  of  said  name 
on  his  jars.  1808,  P//il.  Com.  Pirns,  Pa.,  llowley 
?).  Houghton,  2  Brewster,  803  ;  S.  C,  7  P/u'ln.  39.' 

§  590.  The  plaintiffs    had    carried  on  for  some 


i  ■ 

r 

!     - 

-         * 

i 

J 

y 

M 

;-1' 


fp*^ 


194 


[Jn] 


Name. 


[general.'] 


11- 


V ■  ■'';  -' 


'wEm 


years  at  No.  22  Pall  Mall,  under  th(^  stylti  of  ''Tiu; 
Guinea  Coal  Comj)any "  a  large  business,  which 
had  a  considerable  reputation.  Tiicy  wcr*;  mIso 
freqnently  spoken  of  as  "The  Pall  Ma!!  (iiiinea 
Coal  Company.''  In  March,  1809,  the  defendant, 
who  had  been  th(nr  mauagcn',  set  up  a  rival  l)iisi- 
ness  in  Beanfoi'd  Building's,  Strand,  under  the 
name  of  "The  Pall  Mall  Gninea  Coal  C<»nipany," 
and  at  the  end  of  August  removed  it  to  No.  40  Pall 
Mall.  On  November  24,  the  plaintilfs  linding  that 
many  persons  had  been  misled  into  giving  ordeis 
to  the  defendant  in  the  belief  that  his  concern  was 
that  of  the  plaintiffs,  hied  their  bill  to  restrain  him 
from  trading  under  the  above  style,  or  any  other 
colorable  imitation  of  the  plaintilfs'  business  style. 
The  defendant,  among  other  grounds  of  d(3fense,  al- 
leged, that  the  plaintiffs  had  no  exclusive  right  to 
the  name  "Guinea  Coal  Ccmipany,"'  which  was 
used  by  various  other  establishments  about  Lon- 
don. V^ice  Chancellor  Malixs  granted  an  injune- 
tion  restraining  the  defendant  from  using  the  name 
"The  Pall  Mall  Guinea  Coal  Company"  in  Pall 
Mall.  On  appeal  bydel'endant :  Ift/d,  that  although 
the  plaintiffs  had  no  exclusive  right  to  the  name, 
the  injunction  had  been  properly  granted,  on  the 
ground  that  the  defendant  had  no  right  to  use  the 
name  in  such  a  way  as  to  lead  persons  to  believe 
that  his  business  was  that  of  the  plaintiffs,  and 
that  therefoi'e  there  was  no  objection  to  confining 
the  injunction  to  the  use  of  the  name  in  a  particu- 
lar place,  inasmuch  as  its  tendency  to  deceive 
greatly  depended  on  the  place  where  it  was  used. 
1869,  Before  Lord  Justice  Gifford  on  a^rpeal,  Lee 
V.  Haley,  18  Weelchj  11.  242;  S.  C,  L.  li.  5  Ch. 
im  ;  S,C.,  22  Law  Times  B.  {N.  S.)  2ol  ;  S.  C,  39 


^i: 


[Use  of  or/r's  oicii  \     Xamk.  [irJn'ii  n  s:li'(U lud.  \  ll'.') 

La}r  J.  R.  {X.  S\)  (11,.  284;  .MfTinniiii;  S.  C'.,  18 
Wecl'hi  R.  181  ;  S.  C,   21  Ldx^  Times  11.  \x.^.)  .V}(). 

§  T)'.)!.  The  iiinneniid  ii(l(lr(\ss(»f  the  iniinurnctiirer 
comln'iKMl,  may  ('(Histitufc  a  fi'Mdcniai'k  wliicli  will 
entitle  liiiii  who  adopts  it  to  protection  in  its  ex- 
clusive use,  l)ut  neither  the  name  nor  the  addi'ess 
singly  will  be  sufficient  tor  pi'otection  ;  both  must 
be  used.  187<>,  t^npreinc  CI.  of  lllnioh^  Candee  i\ 
Deere,  :)4  ///.  R.  \m.     See  ^;j  22,  740. 

§  592.  A  name  has  for  cei'tsiin  pui'posi>s  a  com- 
merchd  value.  If  the  pro[)rietor  estimates  that 
value,  and  sells  it  to  another  person,  to  the  extent 
and  for  the  purposes  for  which  he  sold  it,  he  h;is 
no  right  to  nse  it.  1871,  CL  of  Com.  Pleas,  Phil. 
7^r^.,  Gillis  ?).  Hall,  Ayer  v.  Hall,  IJ  Brews,  tm  ;  S. 
C,  8  Phila.  231 ;  S.  C.,  1  Lee/.  Caz.  124. 

§  593.  It  is  unlawful  to  put  np  inutation  goods 
under  the  name  of  the  real  manufactni-ei',  jind  the 
excuse  that  such  an  act  was  authorized  by  a  person 
of  the  same  name  as  that  manufactui'er,  is  al)surd. 
1872,  Hxpreme  Ct.  of  Louisiana,  W(jlfe  v.  Bai-- 
nett,  24  La.  An.  97. 

§594.  Title  to  property  in  the  name  "Keystone 
Line,''  actpiired  by  many  years'  certain,  exclusive 
appropriation  and  use  of  it  by  sliipx)ers  of  mer- 
chandise, who  did  not  own  the  vessels  employed 
by  them,  will  be  protected  in  equity.  1872,  Ct.  of 
Com.  Pleas,  Phila.  Pa.,  Winsor  v.  Clyde,  Stetson 
i).  Winsor,  9  Phila.  513. 

See  also,  §§  283,  878. 


1% 


.  4:. 


11.    How  far  one  may  he  restrained  from  the  use 
of  Ms  oion  name  in  business. 

§    600.      Where    plaintiff    marked    his    goods 
"  Sykes'  Patent,"  to  show  that  they  were  his  own 


y 

>  h  \ 

'   ' 

*  il 


I  ' 


1  on  [  TIsr  of  on «"'  .v  own^^  X  am  k,     [when  rcsfro  Incd.  ] 


mmiiifMcfm'o,  nnd  defomlant  roplcd  flu*  nmrk  on 
his  <;•()()( Is  fo  show  that  tliey  wei'*^  ])l:iiiitin"s  iiianii- 
factin'o,  and  sohl  tlio  "ioods  so  niai'kcd  as  and  f 
plaiiitiirs  inanufartnr<'  ;  ll<J(l,  that  caso  wonld  In- 
for  tlioin jury,  tlioM,i;"li  phiintilt*  and  the  dorendant 
wore  botli  nanx'd  "Svk(»s,"  nnd  neither  of  them 
liad  in  fact  a  valid  patent,  and  that  ;i  verdict  for 
tlie  phnntilf  wouhl  be  sustained  where  tlie  evi(hnice 
was,  that  tlie  persons  to  whom  the  (hd'enchuit  sold 
the  ,i;'oods  knew  that  tli(>y  were  not  manufacituied 
by  the  plaintiff,  but  that  th(^  defendant  coj)ic(l 
])laintifrs  mark,  and  sold  the  goods  so  marked,  in 
order  that  the  purchasers  might  i-e-sell  them  as  and 
foi'goods  manufa(itnred  by  plaintilf,  nnd  which  they 
did.  KS24,  K/nr/s'  Bench,  Sykes  i\  Sykes,  ;j  Bar)i 
d-  (\  :)41  ;  S.  C'  5  Dowl.  &  Ri/l.  292.' 

$^  ()()[.  The  right  wliich  any  person  may  have  . 
the  protection  of  tlie  court,  do<»s  not  depend  ui>on 
any  exclusive  right  which  he  may  be  supposed  to 
have  to  a  particular  name,  or  to  a  particular  form 
of  words.  His  riglit  is  to  be  protected  against 
fraud,  and  fiaud  may  be  pra(;ticed  against  him  by 
means  of  a  name,  thongli  the  peiscm  practicing  it 
may  have  a  perfect  right  to  use  that  name,  provided 
he  does  not  accompany  the  use  of  it  wdth  sucli  other 
circumstances  as  to  effect  a  frand  upon  others.  xV 
blacking  manufactory  had  long  lieen  carried  on 
under  the  firm  nanu^  of  Day  &  Martin,  at  1)7  High 
Ilolborn.  The  executors  of  tlie  survivor  continued 
the  business  under  the  same  name.  A  pei'son  of  the 
name  of  Day,  liaving  obtained  the  authority  of  one 
Martin  to  use  his  name,  set  np  the  s  une  trade  at 
OOj  Ilolborn  Hill,  and  sold  blacking  as  of  the  man- 
nfacture  of  Day  &  Martin,  OOJ  Ilolborn  Hill,  in 
bottles  an  ..  labels  having  a  general  resemblance  to 


[Useo/oncsotcn]     Nami:.  {m/nn  rcsfriiiiu  il.\  l'.>7 


! 


those  of  the  <)ri,i;iuMl  llrni,  jiiid  in  :i  iii:nniei' cuItMi- 
hited  to  iiiislead  the  imhlie.  lie  wms  icstriiinrd  hy 
injunction.  184:J,  Jioll.s  (V.,  CroL't  i\  Diiy,  7  li'ifr. 
84. 

jj  OOU^  Tn  a  suit  for  an  injunction  nuninsf  llic 
use  by  delV'udiint.s  of  a,  certain  name  and  niaik 
ui)ou  tlieii'  g'oods,  the  derendants  admitted  tlic  use 
of  the  name  and  niaik,  but  said  that  it  was  their 
true  name,  and  that  thev  weici  cntithvl  so  to  use  it  : 
the  phnntill's,  witliout  moving-  for  an  injunciiou, 
went  in*:o  evidence  in  equity.  At  tiie  Jieaiiiii;-  of 
the  cause,  the  court,  beinii,' of  o[)inion  that  the  evi- 
dence did  not  establisli  the  phiintilFs  I'iulit  to  the 
iujunctum,  but  that  it  siiowecl  th(^  <h'fen(hints 
to  liave  used  the  nani<3  and  mark  in  (question  on 
tlieir  goods,  in  a  manner  which  might  h-ad  pur 
cliasers  to  understand  falsely,  that  tiie  goods  were 
manid'actured  l>y  the  phunliffs,  gave  tJie  plaint  ill's 
the  opti(m  either  of  having  tlie  bill  disnussed 
against  them  without  costs,  or  having  the  i-ight 
tried  at  law.  The  bill  being  retained  for  a  yeai',  wit  h 
lib(;rty  to  the  plaintiffs  to  bring  an  a(!tiou  at  law. 
the  action  was  brought  and  the  plaintilfs  i-ecoveied 
a  verdict.  The  court  then  granted  the  injunction 
and  ordered  the  defendants  to  jxiy  the  costs  at  law 
and  in  equit\',  except  the  costs  of  the  evidence  in 
equity.  1847,  Vlca  Chancellof  s  Ct.^  Kodgers  r.. 
Nowill,  G  llare^  325;  and  see  H.  C,  5  (.Joui..  Bench. 
(J/.  (}.  &  R)  109  ;  S.  C,  11  Jurhf,  lo;]7  ;  S.  C,  17 

%  G02.  The  plaintiff,  Thomas  Ilolloway,  sold  a 
medicine  as  "Ilolloway's  Pills."  The  defendant, 
Henry  Hollowfiy,  commenced  selling  pills  as  -•  II. 
HoUoway's  pills,"  but  in  boxes,  &c.,  similar  to  the 
plaintiffs,  and  with  a  view  of  passing  off  his  ])ir 


V 


if 


198  {Use  of  one' s  owii]  Name,     [ic/uji  refff  rained.'] 


h  it: 


W^ 


as  the  plaintiff's.  The  jiill  l)()xes  and  pots  wf^re 
similar  in  form  to,  and  the  labels  and  \viap])ers 
wei'e  copied  I'l'om,  those  used  by  the  plaintiif.  The 
defendant  was  restrained  by  injunction.  IS.'jO, 
RolVs  Court,  IloUoway  o.  llolloway,  13  lieav. 
200. 

§  (JO;?.  Where  a  person  is  selling-  an  article  in 
his  own  name,  fraud  must  be  slujwn  to  constitute  a 
case  for  restraining  him  from  so  doing  on  tlie 
ground  that  the  name  is  one  in  which  another  has 
l(jng  been  selling  a  similar  article.  Therefore, 
where  a  father  had  for  many  years  exclusively  sold 
an  article  under  the  title  of  '' J3nrgess's  Essence  of 
Anchovies"  the  court  would  not  restrain  his  son 
from  selling  a  similar  article  under  that  name,  no 
fraud  being  proved.  18.")'J,  Bui-gess  ?).  Buigess,  :> 
I)e  G.  M.  &  G.  890;  S.  C,  17  Jar.  292;  S.  C,  22 
Law  Journal  11.  {N.  S.)  (Jliane.  G7o  ;  S.  C,  17 
En(j.  L.  (t-  Eq.  2o7. 

§  004.  Where  the  plaintiff  and  the  defeiulant 
have  nearly  the  same  names  and  are  engaged  in  the 
same  business,  each  has  the  right  to  use  his  own 
name,  and  a  party  will  not  be  restrained  l)y  injunc- 
tion from  using  his  own  name,  unless  he  so  use  it 
as  to  mislead.  18.57,  JV.  T.  iiupreine  (Jl.,  G.  7'., 
Clark  V.  Clark,  2o  Barb.  7(5. 

g  (JOf).  Wliei'e  a  hini  name,  as  "J.  &  P.  Coats" 
in  connecticm  with  cei'tain  symbols,  has  {icquiivd 
the  properties  of  a  trademark,  it  is  not  an  infringe- 
ment for  two  other  individuals  bearing  the  same 
name,  to  adopt  the  style  of  "J.  &  T.  Coats''  to 
designate  goods  of  the  like  desci'iption,  provided 
they  do  not  use  it  in  connection  with  the  residue  of 
the  trademark  of  the  foiiner  tirm.  Coals  /;.  Piatt, 
17  Leg.  Int.  213;   S.  C,  7  Pift.^.  /..  ./.  3(31, 


[Use  of  oat' s  oioii\    Namk..  [^lohen  rtsli'alued,\  190 

§  GOG.  A  defendant  sold  robacco  pipes  packed 
in  boxes  or  cases,  upon  which  were  hibels  or  de- 
scriptions of  a  siir.ihir  cliaracter  to  those  of  the 
X)laintilf,  using  the  plaintilf  ,>  name  as  being  the 
real  manufacturer,  the  defendant  having  a  p(3isou 
in  liis  employ  of  that  name  :  J.Lld.,  that  such  col- 
orable imitation  and  use  of  the  labels  and  descrip- 
tions could  be  restrained  by  injunction.  180."),  h<'- 
fore  V.  a  Wood,  Southorn  v.  Reynolds,  13  Lair  T. 

§  G()7.  The  court  will  not  enjoin  a  defendnnt 
from  using  his  own  name  in  the  prosecution  of  a 
manufacturing  business,  l)ecause  it  is  similar  to 
that  of  a  rival  manufacturer  in  the  same  business. 
Any  injury  which  one  manufacturer  may  suiter  by 
competition  of  other  persons  of  the  same  name,  from 
the  use  of  such  name  merely,  is  without  a  remedy. 
18G7,  iV.  Y.  Stfpreme  CL,  K  7%  Faber  r.  Fabei',  41) 
Barl).  857;  S.  C,  'S  AM.  Pr.  N.  S.  llo. 

^  G08.  A  manufacturer  has  a  right  to  adopt  and 
appi'opriate  his  surname  as  a  trademai-k  ;  and 
another  manufacturer  of  the  same  ai'ticle,  though 
his  surname  is  the  same,  has  no  right  to  u;;e  his 
own  surname  in  such  a  way  as  to  deceive  th<'  pub- 
lic and  de])rive  the  former  of  the  benelit  of  the  no- 
toriety and  market  which  his  articles  have  gained. 
18G7./iV^  Y.  Sffprc/NC  a.,  G.  7'.,  Howe  ^\  Howe 
Sewing  Machine  Co.,  m  Burh.  2I5G. 

g  GO!).  The  ijlaintilfs  preparations  were  known 
to  tlie  trade  and  public  generally  as  "Stone- 
breakers  medicines."  One  J)r.  Stonebreaker.  a 
bi'other  of  the  plaintiff,  t^i gaged  with  the  defend- 
ants in  th(3  sale  and  prepai'alion  of  medicines  known 
as  "Dr.  Stonebreaker's  Medicines,"  using  on  their 
wrappers  and  labels  the  language  of  the  i)laintilf 


5S 

A 


•^Jl 


<r. 


m 


1i" 


II    '?^ 


;>^ 


200  [ CT^e  o/' one's  owii]  Name.     [loJtru  rcslrauied.] 

on  liis  wrappers  and  labels,  and  printing  on  the 
wrappers  of  some  of  their  medicines  the  cei'tilicates 
given  to  the  complainant  in  recommendation  of  his 
prei)arations.  The  evidence  in  the  case  shovred 
that  the  whole  agreement  between  all  of  the  defend- 
ants was  bnt  a  combination  to  deceive  the  i>nl)lic 
and  to  enable  them  to  obtain  for  their  medicines  the 
benefit  of  the  celebiity  which  the  plaintilFs  prepa- 
rations and  medicines  had  in  the  market,  at  tlie  ex- 
pense of  the  plaintiff  and  in  fraud  of  his  rights. 
IJdd^  that  although  Dr.  Stonebreaker  had  a  right 
to  enter  into  an  agi-eement  with  anybody  to  manu- 
facture and  sell  his  own  medicines,  he  had  no  right 
to  lend  or  sell  his  name  to  i)ei'peti'ate  an  injury 
npon  his  brother,  and  a  fraud  npon  the  public. 
The  defendants  were  restrained  bv  injunction  from 
nsing  the  name  Stonebreaker  in  titles  of  prepara- 
tions and  medicines  the  same  as  those  nsed  by  the 
plaintilf.  1870,  Maryland  ihnrt  of  Appeals, 
Stonebi'eaker  g.  Stonebi'eaker,  3;3  Md.  ils}. 

§  610.  Plaintilf  manufactured  an  article  called 
"Lazenby's  Harvey's  Sauce."  Defendant  em- 
ployed a  person  of  the  name  of  Chailes  Lazenby  to 
assist  in  manufacturing  a  sauce  which  he  called 
"  Lazenby's  Harvey  Sauce,'"  and  put  vip  with  labels 
resembling  the  x>h<intilt"s.  It  wjis  assumed  at  the 
hearing  that  the  word  "Ilarvev's  Sauce"  was  not 
itself  a  tradeniJirk,  but  a  name  open  to  the  })ublic. 
Ifdd,  that  defendant  might  j-epresent  himself  as  the 
proprietor  and  maker  of  a  Harvey  Sauce,  ajul  to 
represent  himself  as  the  maker  of  ji  Harvey  Sauce 
made  according  to  a  recipe  purchased  from  a  Mr. 
Charles  Lazenby,  or  to  represent  that  there  was  a 
connection  by  relationship  between  Charles  Lazenby 
the  vendor,   and  Elizabeth   Lazenby,   the   original 


i.': 


\_Use  of  ones  oicii]    Name,  [w/wji  res!  rained.']  201 


proprietor  of  it ;  but  tliut  the  dereiidant  w;is  not 
entitled  to  use  liis  present  labels,  or  to  represent 
liis  business  as  being*  carried  on  at  Xo.  (5  Edwards 
Street,  or  to  represent  that  his  sauce  was  the  ''orig- 
inal sauce"  or  the  "original  Lazenby's  Sauce  "  or 
"Lazenby  s  Sauce,  the  original."  1871,  (Jh.  Ct.  of 
App.,  Lazenby  v.  White,  41  L.  J.  {X.  K)  cL 
3r)4. 

§  Oil.  The  defendant  sold  his  right  to  use  his 
own  name  on  a  prejiaration  known  us  "Ilairs 
Vegetable  Sicilian  llair  Kenewer."  A  decree  of  the 
court  enjoined  the  defendant  from  using  the  name 
of  "Hall"  or  "11.  P.  Hall"  upon  any  such  pre- 
X)aration  as  aforesaid.  The  defendant  commenced 
the  manufacture  and  sale  of  an  article,  whicli  he 
designated  "11.  P.  llalFs  Improved  Preparation  for 
the  Hair,"  and  added  upon  the  label  that  the  new 
ai'ticle  was  nt)t  the  original  article.  Upon  a  rule  to 
show  cause  why  an  atta^.-hment  should  not  issue 
against  him  for  a  c(mtempt  in  disregarding  the  de- 
cree of  the  court :  I/chl,  that  a  name  has  for  certain 
purposes  a  commercial  value.  If  the  projjrietor 
estimates  the  value  and  sells  it  to  another  person, 
to  the  extent  and  for  the  purposes  for  whicli  lie  sold 
it,  he  has  no  right  to  use  it.  That  the  use  of  the 
name  "R.  P.  Hall"  by  the  defendant  was  a  i)al- 
I)able  piracy  of  i)laintill"s  trademark,  and  a  clear 
evasion  of  the  decree.  1871,  Of. of  Common  PIe(t.s, 
Phila.  Pa.,  Gillis  c.  Hall  ;  Ayer'w.  Hall,  :?  Brews. 
509;  S.  C,  1  Lerj.  Gaz.  11.  124;  S.  C,  8  Phila. 
231. 

§  C12.  Any  person  who  by  fair  means  has  gained 
the  knoAvledge  of  a  trade  secret,  may,  aft^r  tli(^ 
death  of  the  original  inventor,  make  and  sell  the 
article  under  tiie  name  of  the  original  inventor,  pro- 


w 


% 


r 


f 

'a* 

! 


if 


11     .• 


i]    iS 


202  [ZZ^e  of  one's  own]  Name.     [loJien  restrained.] 

vided  siicli  person  does  nothing'  to  induce  the  pnblic 
to  believe  that  tlie  ui'ticle  sohl  bv  him  is  made  l)y  the 
successor  of  the  original  inventor.  A  member  of 
the  family  of  11.  J.,  the  original  inventor  of  a  secret 
preparation,  havini^  by  fair  means  become  possessed 
of  the  original  lecipe,  made  and  sold  the  article 
by  the  name  given  to  it  by  the  original  inventor, 
under  the  sigmiture  of  11.  J.,  his  own  name  being 
il.  J.  J.  Held,  that  he  was  not  entitled,  as  against 
the  successor  of  the  original  inventor,  to  sell  the 
article  under  the  signature  ^  11.  J.,  simply,  or  to 
represent  that  his  was  the  (^nly  genuine  prepara- 
tion. 18T2,  James  d.  James,  Law  R.  13  E<j.  421 ; 
S.  C,  20  W.  R.  434;  S.  C,  41  Law  J.  U.  {N.  S.) 
C/i.  353;  S.  C,  2G  L.  T.  R.  {N.  S.)  508. 

^  013.  II  by  agreement  sold  the  use  of  his  name 
to  C,  and  C  manufactu/ed  goods  marked  "II  &  C." 
On  C's  death,  Avhich  terminated  the  agi'eement,  C's 
son  continued  to  manufacture  goods  with  the  same 
mark.  II  forbade  him  to  use  his  name  under  said 
agreement  or  in  any  way,  and  C's  son  rej^lied  that 
he  had  mnde  arrangements  with  another  person 
named  H,  to  use  his  name  in  connection  with  his 
own.  Held,  that  the  plaintiff,  having  no  interest  in 
the  business,  had  no  right  in  any  trademark  used 
in  it,  and  (;ould  not  therefore  maintain  a  bill  to  re- 
strain the  use  of  the  name  of  Ilallett  &  Cumston  as  a. 
trademark  ;  nor  to  restrain  the  use  of  his  name  under 
the  Gen.  Sts.  of  Mass.,  c.  5(5,  §j^  3,  4,  in  the  abseiu-e  of 
a  distinct  and  sufficient  allegation  that  the  defend- 
ant used  the  name  of  II.  with  intent  to  repi-esent  it 
to  be  the  nauie  of  the  plaintiff,  and  thereby  to  de- 
fraud and  injure  him.  1872,  Supreme  JiuCl  Ct.  of 
Mass.,  Ilallett  (\  Cumston,  110  Mass.  20. 

§  G14.     Theodore  J.  and  John  H.  McGowan  were 


t  y'( 


[Use  of  one's  oioi]    2\ame.  \_iohcii  restrained.]  2();> 

nianiifacturers  of  pumps,  and  partners  in  business 
under  the  name  of  "  McGowan  Jirot-hers."'  John  II, 
sold  out  all  his  interest  in  the  business  and  assets 
of  the  lirm  to  Theodore  J.,  including-  the  old  pat- 
terns, with  the  name  "  McUowan  Brothei's"  on 
them,  and  Theodore  J.  was  to  assume  the  liabilities 
and  succeed  to  the  business  of  the  iirni,  and  associ- 
ate with  himself  others  if  he  chose.  After  the  C(m- 
tract  of  sale  was  executed,  there  was  inserted  in  ihe 
notice  of  dissolution  a  privilege  to  Tiieodore  J.  of 
using  the  old  lirm  name,  as  to  which  there  had  been 
no  previous  negotiation.  Theodore  J.,  witli  others, 
l)rocured  a  certihcate  of  inc()r[K)ration,  under  the 
name  "The  McGowan  Brothers  Pump  and  Machine 
Company,''  and  transferred  to  the  said  corporation 
all  his  rights  and  interest  as  purchased  from  John 
11.  llckl,  that  John  IL,  who  set  up  a  simihir  busi- 
ness by  himself,  was  entitled  to  an  injunction  to  re- 
strain the  cor])oration  from  the  use  of  "McClowan 
Brothers''  in  its  name;  the  use  of  the  (jld  iirm 
name,  granted  to  Theodore,  being  in  the  nature  of  a 
revocable  license.  That  the  old  name  is  not  a  trade 
mark  to  be  used  by  the  corporation;  and  while  it 
lias  a  right  to  use  the  t)ld  X)at terns  and  sell  the  cast- 
ings with  the  name  "■McClowan  Brothers"  on  them, 
it  cannot  hold  out  by  the  corporate  name,  that  nil 
the  articles  made  by  it  are  in  part  the  product  of 
the  skill  and  labor  of  John,  or  that  the  corporation 
is  in  fact  tlie  old  lirm.  That  a  well-founded  appre- 
hension of  injury  is  sufhcient  to  warrant  an  injunc- 
tion, where  the  act,  if  completed,  must  give  a 
ground  of  action.  1872,  f'^upcrior  Vt.  of  Ciiicin- 
'Hdli,  0.,  McGowan  Bros.  Pump  and  Machine  Co.  i). 
McGowan,  2  Cui.  IJU]. 
§  015.     The  petitioners'  spoons  and  forks   were 


%> 


1': 


-  m 


f  (J 


204  \_Use  of  one's  own,]  Namk.     [/c7ien  restrained.'] 


't\ 


|i     if 


manufactured  under  tlie  supervision  oJ'  the  Rogers 
brothers  and  were  stamped  "  1847,  llo,ii;(»rs  Bros.  A. 
1."  The  respondent  acquired  tlie  right  from  other 
jiersons,  named  Rogers,  to  stami)  tlie  name  of  Rog- 
ers on  plated  spo(jns  and  forks  niMUufactured  by 
respondent  for  himself  and  theui.  lie  stam})ed  the 
got)ds  so  manufactured  '"C.  Rogers  Bros.  A.  1,"  and 
C.  Rogers  &  Bi'os.  A.  1."  These  stamps  resembled  the 
petitioners'  tratlemark  to  such  an  extent  that  they 
were  calculated  to  deceive,  and  did  in  fact  deceive, 
unwary  purchasers,  and  the  respondent  sold  large 
quantities  of  his  own  goods  thus  stamped,  upon 
the  reputation  of  the  petitioners'  goods,  stamped 
Avith  their  trademark.  Held,  that  the  respondent's 
trademarks  were  infringements  of  the  petitioners' 
trademark,  and  that  the  petitioners  were  entitled  to 
<in  inj miction  restraining  their  furthei'  use  by  the 
respondent.  The  court  declined,  however,  to  i)vo- 
liibit  absolutely  the  use  of  the  name  ''Rogers,"  in- 
asmuch as  that  name  might  be  used  in  such  a  man- 
ner  as  not  to  constitute  an  infringement  of  the 
petitioners'  trad(?mark.  The  court  also  declined  to 
2)i'ohibit  absolutely  the  sale  hy  the  respondent  of 
goods  bearing  the  stamp  in  question,  which  were 
on  hand  at  the  time  the  petition  was  served,  and 
also  goods  at  that  time  in  x)rocess  of  manufacture 
and  which  had  been  stamped,  as  such  goods  might 
be  sold  to  purchasers  who  would  not  be  misled  by 
the  stamps,  and  stmie  injustice  might  be  done  to  the 
jespondent  hy  such  absolute  prohibition — lejjving 
the  petitioners  to  their  remedy  at  law  for  any  injury 
that  might  be  actually  done  by  tlie  sale.  1872, 
A</^y>.  Ct.  of  Errors,  Conn.,  Meriden  Britannia  Co. 
r.  Parker,  39  Conn.  4r)0. 
g  OIC.     A  man  cannot  make  a  trademark  of  his 


\TJseofones  niGii\     Name.  Sji^lien  rostraUmd.']  205 

name  to  the  exelusion  oC  ji  like  use  of  If  by  another 
of  the  same  nnme,  the  nse  of  it  by  tlu^  l:itt('i'  Ix^inu; 
fair,  and  una('<'omj)nnie(l  by  eontiivances  to(hM'eiv('. 
187;3,  N.  Y.  Hu.preme  (U.^Cr.  T.,  AVolfn  r.  Jiurke, 
1  Ldiis.  ir>i  ;  S.  C,  reversed  on  another  point,  HO 
N.  Y.  11.-). 

§017.  ''There  was  hitely  before  me,  and  befoi-e 
the  court  of  appeal,  who  affirmed  my  decision,  the 
Annatto  case,  Fullwood  v.  FuUwood.  In  tliat  case 
the  uncle,  the  plaintiif,  had  got  the  original  l)usi- 
ness.  The  nephew,  the  defendant,  set  up  th(^  same 
businesfr!,  and  used  a  label  so  like  his  uncle's  that  I 
liad  great  difficulty  in  saying,  even  on  the  label  it- 
self, that  there  was  not  a  case  for  interference. 
Upon  the  whole,  T  am  inclined  to  think  the  court 
would  not  have  interfered  upon  the  label  alone,  as 
Ids  name  was  FiiUwoorl,  and  he  did  make  annatto, 
as  long  as  he  remained  at  a  distance.  At  all  events, 
the  uncle  did  not  ask  for  the  interfei'ence  of  the 
court  on  that  ground  ;  but  nothing  w(mld  do  but 
that,  like  the  defendant  in  the  Guinea  Coal  Com- 
pany case,  he  must  i-emove  from  the  place  where 
he  had  been  carrying  on  his  business,  into  the 
same  small  street  in  Avhich  his  uncle  carried  on  his 
business.  Then,  there  being  a  combination  of  the 
name,  a  similarity  of  the  labels,  and  the  same  place 
of  manufacture,  I  thought,  and  in  that  I  was  af- 
lirmed  by  the  court  of  appeal,  that  it  was  a  case  f(n' 
the  interference  of  tlie  court,  l)ecause  I  Avas  of 
opinion  that  he  could  not  have  removed  into  that 
street,  of  all  streets  in  the  woi'ld,  except  for  the 
l)urpose  of  availing  himself  of  the  name  and  repu- 
tation of  his  uncle."  Jfal/ns,  V.  C,  Fullwood  v. 
Fullwood,  cited  in  L.  7?.  17  Bq.  40. 

§  618.  Plaintiffs,  who  were  two  brothers,  carried 


•h 


'\\\ 


^^'f^ 


■''■'^  :f 


■,..i5'J..' 

■  iiv 


206  \_Use  of  one's  oioii]  Xame.     \}o?if.)i  refitrauu^d.] 

on  business  at  West  Troy,  Albany  county,  N.  Y., 
as  bell  founders,  under  the  firm  name  of  "  E.  A.  & 
G.  R.  Meneelv."  This  business  had  ])een  estab- 
lished  bv  Andrew  Meneelv,  tlie  father  of  the  i)lain- 
tiffs,  who  had  acquii-ed  an  extended  reputation  of 
great  vahie  as  a  manufacturer  of  bells,  and  which 
had  by  his  last  will  been  given  to  plaintiffs.  De- 
fendants, one  of  whom  was  a  bi'other  of  i)laintiffs, 
after  the  father's  death,  began  the  manufacture  of 
bells  under  the  name  of  ''Meneely  &  Kimberly  " 
at  Troy,  Rensselaer  county,  N.  Y.  The  defend- 
ants by  the  use  of  the  name  "Meneely ''  expected 
and  intended  to  deriv^e  a  profit  and  advantage  from 
the  good  reputation  and  celebrity  in  bell  founding 
given  to  that  name  by  Andrew  Meueel}'.  In  an 
action  to  restrain  defendants  from  the  use  of  the 
name  of  "  Meneely  "  in  the  bell  business,  /aid,  (1) 
that  equity  woidd  not  interfere  to  i^revent  defend- 
ant, Meneely,  from  the  use  of  his  own  name  in 
such  business,  no  fraud  or  intention  to  injure  plain- 
tiffs or  deceive  the  public  being  shown,  even  though 
he  intended  to  derive  advantage  from  such  name  ; 

(2)  that  there  was  not  such  a  resemblance  in  the 
names  of  the  firms  as  would  of  itself  tend  to  de- 
ceive the  public  or  indicate  a  fraudulent  purpose  ; 

(3)  that  the  location  of  defendants'  business  was  not 
of  itself  evidence  of  an  attemi)t  to  deceive  the  pub- 
lic, or  an  interference  with  plaintiff's  business. 
1874,  N.  Y.  Supreme  CL,  G.  T.,  Meneely  y?.  Me- 
neely, 1  Hwii,  HOT;  S.  C,  H  T.  &  (J.  540;  S.  C,  af- 
firmed, 62  N.   Y.  427. 

§  610.  Andrew  Meneely,  by  his  will,  after  making 
certain  specific  legacies,  devised  all  the  remainder 
of  his  estare,  both  real  and  personal,  to  the  plain- 
tiffs, charging  them  with  the  sui)port  and  mainte- 


|i     ! 


V,  V!i 


I., , 


\_Use  of  one' s  own]    Xa.aii:.  [n-'/()f  i'(:<lnilit('d.\  2()V 

nance  of  his  children  dm-ing  the  ininoi'ity  of  tlio 
youni^est  of  them,  and  wirli  the  piiyment  of  cortaiii 
legacies,  and  he  states  tlial   in  so  (h)in;jr,  lie   has 


ni 


taken  into  view  "that  I  leave  (heni 

conveniences  ft)i'  cui'jyini;'  on  a  successful  husiness, 

and  the  ii'ood  will  and  custom  which 

it  is  believed  is  estahlished  and  connected  wiih  it." 
Held,  (1)  that  there  is  a  distincticni  between  appro- 
priating the  good  will  of  a  business  of  a  (h-ceased 
father,  carried  on  in  a  particular  locality,  and 
enjo^dng  the  ))enellt  of  his  name  and  reputation  as 
a  man  of  skill  and  fair  dealing;  {2)  that  there  was 
nothing  in  the  language  of  the  will,  which  coirferred 
upon  the  plaintiiTs  the  exclusive  us(^  of  the  name  of 
Meneelv  in  the  business  of  bell  founding.     Ibid. 

§  G2().  If  the  defendants  Avere  using  the  name  of 
Meneely  with  the  intention  of  holding  themselves 
out  as  the  successois  of  Andiew  jMeneely,  and  as 
the  proprietors  and  managers  of  the  old-establislied 
fonndiy  which  was  being  conducted  by  the  plain- 
tilfs,  and  thus  enticing  away  the  i)lainti(fs"  custom- 
ers :  and  if  with  that  intention  thev  used  the  name 
in  such  a  way  as  to  make  it  appear  to  be  that  of  the 
j)laintilfs'  lirm,  or  resorted  to  any  artiiice  to  in- 
duce the  belief  that  the  establishment  of  the  de- 
fendants was  the  same  as  tliat  of  the  plaintiiTs,  and, 
perhaps,  if  without  any  fraudulent  intent  they  liad 
done  acts  calculated  to  mislead  the  public  as  to  the 
identity  of  the  establishments,  and  produce  injury 
to  the  plaintiifs  beyond  that  which  resulted  from 
the  similarity  of  name,  then  the  cases  referred  to 
sustain  the  proposition,  not  that  a  court  of  equity 
would  absolutely  restrain  the  defendant  Meneely 
from  the  use  of  his  own  name  in  any  way  or  form, 
but  simply  that  the  court  would  enjoin  him  from 


>,'in 


'\  r^ 


208  f  Use  of  ones  own]  Name,    [ichcn  rest  rained.] 


I   ■Hi- 


Bl    !v 


using  it  in  sndi  a  way  as  to  decpivc!  tlio  ])ul)li('  nnd 
injure  tlio  plaintiffs.  Tlio  ninnncr  ol'  using  tlie 
name  is  nil  that  Avonld  be  enjoined,  not  the  simple 
use  ol'  it,  Tor  eveiy  man  has  the  absolute  light  to 
use  his  own  nanwi  in  his  own  business,  even  though 
he  may  thereby  interfere  with  or  injure  the  ))usi- 
ness  of  anothei"  person  bearing  tlu^  same  name,  pro- 
viih^d  hedoes  not  resort  to  an\'  artilice  or  contrivance 
i'or  the  i)urpose  of  producing  t!ie  impression  that 
the  estal)lishments  are  identical,  oi'  do  anything 
calculated  to  mislead.  Whei'e  the  only  confusion 
cieated  is  that  which  results  frojii  tlu;  similarity  of 
the  names  the  coui-t  Avill  not  interfere.  A  person 
cannot  make  a  trademark  of  his  own  name  and 
thus  obtain  a  mcmopoly  of  it  which  will  debar  all 
other  pei'sons  of  the  same  name  from  \ising  their 
own  names  in  their  own  business.  N.  F.  CV.  o/* 
AppniU,  Ibid.,  02  N.  Y.  427. 

jj  (i'il.  Plaintilf  sold  a  cosmetic  known  as 
'•  (lourard's  Oriental  Cream  or  Magi(vd  Beautilier,'' 
and  claimed  those  words  as  his  trademark,  and  that 
the  defendants  inlringed  his  rights  by  using  the 
words  "Creme  Orientate"  and  adding  thei'eto  "by 
])]-.  T.  F.  Gourarcrs  Sons."  Plaintilf  was  Ivuown 
by  the  name  of  Dr.  J.  W.  Trust  for  a  number  of 
years,  and  the  defendants,  liis  sons,  wei'e  known 
l)y  that  name.  Three  years  l^efoi-e  the  commonce- 
miMit  of  this  action,  plaintilf  s  name  was  changed  to 
Ti'ust  Felix  Gourard.  The  defendants  were  en- 
joined. 187."),  N.  r.  S/fjjre/tie  CY.  (rcnl.  71,  Gour- 
ard  6\  Trust,  :J  Ilim,  027. 

§  G22.  PlaintifTs  i'or  a  long  time  had  been  engaged 
in  business  in  New  York  City  as  manufacturers  (;f 
pianos,  under  the  firm  name  of  Decker  iJrolliers, 
and    their  pianos   had    actpured  much   celebrity. 


* 


[  Use  of  one's  own]    Namk.  -[/rJien  rrsfrnincd.  \  i?()0 

Defendants sinrp  1871,  luid  been  in  tliesjinic business, 
in  tin;  same  place,  undei-  tlie  iiini  name  of  Dcckci-  «fc 
Barnes,  and  defendant  Decker  prior  to  that  tim(> 
had  b<'en  ennai^'ed  in  tin*  same  business  under  the 
nameol!  J)ecl\.er  &  Ctj.  The  defendants  caused  tobe 
registered  and  recor(h^das  a  trademarlv,  in  tlie  patent 


■%r 


oflice,  tlie  words 


The  Drrkn-  Pi, mo. 


Plaiatilfs 


souylit  to  enjoin  der<'ndants  from  tlie  use  of  said 
tradenuuiv.  clalniinu-  it  was  obtained  foi'  the  pmpose 
of  niisleadini!,'  tht;  i)ublic,  and  that  it  was  an  arti- 
hcecalcuhited  and  int«Midod  to  induce  ])iirchaseis  to 
believe  that  defendants  were  solely  entith'd  to  use 
the  name  of  J)ecker,  and  tliat  tlie  pianos  manufac- 
tured l)y  them  were  those  of  the  plaintiifs.  Defend- 
ants claimed  that  their  pianos  were  known  in  the 
trade  as  Decker  pianos,  long'  before  the  plaintiifs  ac- 
quired a  reputation  as  the  manufacturers  of  ])ianos. 
All  the  erpiities  in  the  complaint  and  plaintiffs' 
affidavits  were  (hMiied  and  lebutted  bv  the  answer 
and  {iffidavits  of  defendants.  Motion  for  injunc- 
tion peudenie  lite  denied.  1870,  X.  Y.  Sifpreiite 
CL,  S.  7\,  Decker  v.  Decker,  r)'2  IJoir.  Pr.  218. 

j5  G2;3.  The  plaintiifs'  trademai'k  consists  of  the 
words  "Prince's  Metallic  Paint,"  used  in  a  partic- 
ular foi'm.  The  defendants,  for  their  trach'mark, 
use  the  words  "  Piince  Bros.  Iron  Ore  I'aint,"'  in 
an  entirely  dilferent  foini.  Prince  is  the  name  of 
the  defendants  ;  they  are  brothers,  and  they  man- 
ufacture and  sell  a  paint  which  they  call  "  iron  ore 
paint."  The  injunction  restrains  them  from  using 
the  name  "Prince,"  as  applied  to  the  paint  manu- 
factured by  them,  "or  upon  any  label,  caid,  bill- 
head, or  any  advertisement."'  The  order  is  alto- 
gether too  broad.  The  use  of  their  own  name  in 
connpotion  with  their  business,  in  any  form  that 


V, 

Ji  ' 

■■i'\ '  \ 

-•'•11 


210       [Corporate]       Namk. 


[)iamc.^ 


tgv 


does  not  infringe  the  pljiintiffs'  ti-adeniark,  rniinot 
be  enjoined.  But  I  thinlv  tliiit  ddVMidjinfs"  tindc- 
niiirk  is  no  iniVinyenifMit  of  tlie  plaintiffs',  TIm'ih 
is  no  similitude  between  the  trademarks  except  tlu^ 
woi'd  "  Prince,"  and  that  is  only  used  to  indicate 
that  Pi'ince  Br.)s.  nre  the  manufactureis  oF  iron  ore 
])aint,  and  not,  1  think,  to  hold  out  to  puichasers 
tlmt  theirs  is  a  Piince  metallic  i)aint  nuuh^  by 
plaintiffs.  Motion  denied  and  injunction  order 
dissolved,  with  ten  dollars  costs  of  oi)posin2,-.  1877, 
N.  Y.  Supreme  CL,  S.  7\,  Piince  Metallic  Paint 
Company  ?),  Carbon  Metallic  Paint  Company,  unre- 
ported. 

See  also  §§  144,  G89,  949. 


ai   ■■] 


D' 


III.     Corporate  name. 


I  ;'r 


,.l 


II    ■  i-; 


§  630.  The  plaintiff,  "  The  London  and  Provin- 
cial Law  Assurance  Society,"'  was  project(>d  in  the 
year  1845,  and  its  deed  of  settlement  was  re^nistei-ed 
in  November,  1840.  Some  time  afterwards  anothei- 
Insurance  company,  the  defendant  in  the  suit,  (tailed 
''The  L(mdon  and  Provincial  Joint  Stock  Life  1\\- 
surance  Company,"  was  projected  and  completely 
registered  on  June  20,  1847.  A  motion  was  made 
by  the  plaintiff,  to  restrain  the  defendant  from  using 
the  words:  "London  and  Provincial."  The  Ai'-e 
Chancellor  refused  to  grant  the  injuncfion.  »ii  ih-- 
grounds  that  it  Avas  a  fair  question  utT  the 

plaintiff  was  likely  to  suffer  an;  jmy,  iiii^l^ 
whether  there  had  been  such  a  lengi  of  us<  r  by 
the  plaintiff  as  to  entitle  it  to  comi)lain,  bi  gave 
the  plaintiff  leave  to  bring  an  action  at  law.  1847, 
Vice  CJiancellof  s  Ct.,  London  and  Provincial  Law 
Assurance  Society  v.  London  and  Provincial  Joint 


[Corporcf'  \ 


Xamk. 


\_n(iint'.\ 


•il 


Stock  Lifo  Tnsui'ance  Company,  11  J/fn's/,  0;18  :  S. 
v.,  17  Lam  J.  11.  {N.  S.)  Ch.  'Al. 

iVt'M.  The  ('or|Ktnito  Tuime  of  a  roi'iKirntion  is  ;i 
trndemark  from  tli*'  iifcessitv  oC  the  thiim*.  juid 
til)on  every  ('(msideration  of  private  jiislicf^  mid 
pid)li('  ])oli('y.  deserves  the  siime  eotisidciiitiou  iiiid 
prote'-tion  from  :i  court  of  eqiuty.  A  corpornte 
iiMiiie  is  a  necessni'y  element  of  ii  corporn lion's  ex- 
istence, and  any  act  wliicli  produces  c(»n fusion  or 
uncertainty  concerninfi"  such  nnme,  is  well  ctdcii- 
lated  to  injuriously  nfTect  the  identity  and  ))usiness 
of  the  coi'poration.  1870,  U.  S.  (Umill  ('onrf, 
Newby '«.  Oregon  Central  11.  II.  Co.,  1  Iharh,,  (V>0. 

§  G'1'2.  The  right  toacoi-porate  niinuMloes  not  rest 
in  i)arol,  but  is  sliown  l)y  tlie  record  ;nid  is  tiiiiMe 
l)y  inspection  tliereof  in  any  foi'm  of  pi-oceed/ng. 
Therefore,  a  (!Ourt  of  ecpiity  will  n(»t  refuse  to  enjoin 
the  use  of  such  name  l)ecause  the  right  to  the  same 
has  not  lieen  established  at  law.     I  hid. 

%  G8:^  The  jurisdi(!tion  to  enjoin  the  use  of  a  cor- 
porate name  does  not  depend  upon  the  insolvency 
of  the  defendant.     IhkJ. 

§  Go4.  Where  the  name  of  a  manufacturing  cor- 
poration designates  the  origin  and  ownership  of 
goods  manufactured  by  it,  it  will  be  protected  iu 
the  use  of  its  name  to  the  same  extent  and  upon 
the  same  i^rinciple  that  individuals  will  l)e  pro- 
tected in  the  use  of  trademarks.  AVliere  a  corpora- 
tion, with  the  consent  of  its  principal  stockliolders, 
lias  embodied  the  names  of  such  stockholders  in  tlie 
corporate  name,  the  right  to  use  the  name  so 
adopted  will  continue  during  the  existence  of  the 
corporation.  Another  corporation  subsequently 
formed,  and  composed  in  part  of  the  same  persons, 
will  have  no  right  so  to  use  the  names  of  such  per- 


■'•i'-' 


U 


•  .-^.f 


% 


It 


w  m 


212       [Corporate]       Name. 


[name.] 


■I 


.;i'V| 

mi 


II:     T. 


sons  as  to  mislead  those  (lealinj?  with  tlieiii  into  the 
belief  tluit  the  two  companies  are  the  same.  1870, 
i^irprenie  Court  of  Errors  of  Connecticut,  Holmes  v. 
Holmes,  Booth  &  At  wood  Maul'.  Co.,  37  Conn.  278 
§  (*);>.■).  In  1853  the  plaintiit'  corporation  was  or- 
ganized under  the  joint  stock  laws  of  Ct^nnecticut. 
taking  the  name  ''Holmes,  Booth  &  Haydens" — 
being'  the  names  of  its  principal  coi-porators  or  pro- 
moters. Twt^  of  tliem.  Israel  Holmes  :ind  J.  C. 
Boorli,  whose  names  appear  in  the  corporate  title, 
by  long  experience  had  acqnired  consideral)le  skill 
and  r(^pntation  in  the  manufacture  of  brass,  the 
business  for  which  the  corj.-oration  was  organized. 
Thus  organized,  the  corpoiution  established  and 
carried  on  a  successful  business,  and  tli(?ir  coi-por- 
ate  name  accpiired  a  valuable  reputation  in  the  pub- 
lic markets  of  the  ccmntry.  Most  of  the  respond- 
ent's coi'porators  Avere  officers,  stockholders  and 
(ini])l<»yees  of  the  plaintiff  corporation.  One  after 
another  I'esigned  his  oflice  or  position,  and  sold  out 
Jiis  stock  and  secretly  organized  and  put  in  (n)eia- 
tion  a  rival  coinpany  (in  1800)  which  bought  the 
entire  property  of  a  similar  corporal  ion  in  a  neighbor- 
ing town  and  located  themselves  permanently  in  the 
same  town  with  the  petitioners,  established  tlunr 
depots  for  the  sale  of  their  goods  in  New  York  and 
Boston  as  near  as  practicable  to  the  depots  of  the 
petitioners,  and  organized  uiuhn'  the  coi'i)orate  title 
of  "The  Holmes,  liooth  &  Atwood  Manufacturing 
Company."'  The  similarity  of  the  names  of  the  two 
ccmipanies  resulted  in  ccmTusion  of  llieir  corresjion- 
dence,  mistakes  in  the  delivery  of  orders,  goods, 
&c.,  and  the  court  l)elow  found  that  "by  I'enson  of 
this  sinnlarity,  dealers  in  the  mark(^t  are  likely  to 
be   confused  and  misled  into  the  belief   that   the 


mm 


\_Descript toe  name]    Name.       [and  wor/Ls.]      2i;5 

companies  are  the  same."  Ilr/d,  tliat;  I  ho  respond- 
ents shoukl  be  restrained  l)y  injunction  i'roni  the 
use  of  their  said  title.     I  bid. 

§  G30.  Plaintiff,  a  manufacturing  company,  had 
h)ng  applied  its  corpcmite  name,  "The  Amoskeag 
Manufacturing  Company,"  to  numerous  kinds  of 
cotton  goods,  but  had  never  made  prints.  Some- 
times its  full  name  appeared  upon  th(i  labels  allixcd 
to  its  goods,  at  other  times  the  word  '' Amoskeag,*' 
and  again  "A.  M.  Co.'"  or  ''A.  M.  C."  iJefendant 
used  the  word  "  Amoskeag"  on  prints:  J/cI//,  that 
plaintijf  was  entitled  to  an  injunction  restiaiuing 
the  defendant  from  such  use  of  its  coi'porate  name. 
187G,  iY.  Y.  Sf/prez/ie  CL  l^pccial  Term,  I'he  Amos- 
keag  Manufacturing  Company  c.  Garner,  4  Am. 
Law  Times  It.  {N.  S.)  170.  «ee  5G  JJajb.  1.31,  and 
0  Abb.  Pr.  {JY.  S.)  205. 


IV.     Dcscrijjiim  name  and  words. 

§  040.  The  phiintiirs  father  prepared  and  s(jld  a. 
medicine  called  ''Dr.  Johnson's  Yellow  Ointment," 
for  which  no  patent  had  been  obtained.  The  })lain- 
tilF,  after  his  fathers  tleath,  continued  to  sell  tlu; 
same.  The  defendant  sold  a.  medicine  under  the 
same  name  and  mark,  but  no  evidence  was  given  of 
the  defendant  having  sold  it  as  if  prepared  by  tin; 
plaintiir.  Held,  that  no  action  could  be  maintained 
against  him  by  the  plaintilf.  ITSo,  Kukj  s  Ihrivh. 
Singleton  c.  ]3olton,  IJ  Dowjlas,  'i^i. 

%  041.  There  is  no  exclusive  right  in  tlie  manu- 
facture and  sale  of  u  medicine,  and  therefore  the 
sale  by  another  person  of  a  medicine  undei'  the 
same  title  as  the  plaiiitilfs'  will  not  be  prevented — 
provided  the  defendant  does  not  rei)i'eseat  la;;  ar.^- 


H^ 

•'v""'^^B . 

■'i     ' 

Mi  )\ 
ft    " 

1 

91' 

'1 

if 

..■far' 


I 


n'J 


r-jlr 


214      [Descriptive]     Name.      [naine  and  woj'ds.] 

ole  tol)e  the  same  as  the  plaintiffs.    1813,  Bifore  llie 
Vice  Chaiicellor,  Caiihain  v.  Jones,  2  V.  tC-  li.  218. 

^  G42.  The  bill  stated  that  Isaac  Hwanson  was 
the  owner  of  tlie  recipe  forpreiKirini^-  Yelnu's  Veii-e- 
tal)le  Syrup,  which  he  becpieathed  to  the  i)laintilf, 
who  continued  its  mannfactiire  and  sale.  Tlie  de- 
fendant, a  former  servant  ol'  ttwanson,  manufac- 
tured and  sold  a  spurious  coini)Osition  uiuku'  the 
name  of  Velno's  Vegetable  Syrup,  and  stated  by 
him  in  advertisements  and  handbills,  to  be  the 
same  medicine  in  (piality  and  composition  as  that 
made  by  Swanson  antl  the  plaintilf .  (ieneral  denrur- 
wv  to  the  bill  allowed.    I  bid. 

i  (54').  \Vliere  certain  medicines  are  d(\signated 
1)>-  tlie  name  of  the  inventor,  as  a  generic  term, 
designating  their  general  character,  the  inventor  is 
not  entitled  to  the  exclusive  right  of  compounding 
or  vending  them,  unless  he  lias  a  patent  thei-elor  ; 
and  it'  another  person  prei)ares  such  medicines  of 
an  inferior  qualit\',  and  sells  tlieni,  and  by  this 
means  all  medicines  of  that  class  are  brouglit  into 
disrepute,  such  inventor  can  maintain  no  action  for 
any  loss  sustained  by  him  in  consetpience  thereol', 
unless  he  sold  them,  or  placed  them  in  the  liandsoL' 
others  to  sell,  as  and  for  the  medicines  made  l)y  th(; 
inventor,  so  that  persons  pui'chasing  the  same  suj)- 
posed  and  believed  they  were  purchasing  the  medi- 
cines made  and  prepared  by  the  inventor,  l^o- 
tection  of  the  words  "  Thomsonian  medicines"  as 
a  trademark  refused.  18'J7,  fiiipreme  JiuTl  CI.  of 
J/rr.sv^,  Thomson  i\  Winchester,  19  Pick.  214. 

§  044.  There  is  no  exclusive  right  in  tin?  use  of 
marks,  symbols  or  letters,  whicli  indicate  the  appro- 
priate name,  mode,  or  process  ol'  manufacture,  or 
the  peculiar  or  relative  (piality  oi'  the  falnic  manu- 


i 

3 


[Descr/pUce  name]    Xa.me.      [and  word.s.\       215 


mM 


fartured,  us  {listliiguished  from  tliose  mju'ks  wiiicli 
indk'iite  the  true  oi'ig-in  or  ownership.  1849,  N.  F. 
Superior  01. ,  S.  7'.,  The  Anioskeag  Mfg.  Co.  v. 
Spear,  2  Sancl/.  iS/tp'  r  CI.  51)1). 

§  045.  No  exclusive  riglit  to  the  use  of  words, 
marks,  or  devices,  which  do  not  denote  tlie  goods  or 
property  or  particular  i)lace  of  business  of  a  person, 
but  only  the  nature,  kijid,  or  .^uulity,  of  the  arti- 
cles in  which  he  deals,  can  be  accpiired.  Tliere  is 
ol>vi(>usiy  no  good  reason  wJiy  one  person  shoukl 
liave  anv  better  right  to  use  tiiem  than  another. 
They  maybe  used  by  many  dilferent  jjersons  at  the 
same  time,  in  their  brands,  n\arks,  or  hd)els  on 
their  respective  goods,  with  perfect  trutli  and  fair- 
ness. They  signify  nothing,  wlien  fairly  interpre- 
ted, by  whicli  any  dealer  in  a  similar  article  could  be 
defrauded.  Hence,  the  court  refusetl  to  protect  the 
use  of  the  words  "Cylinder,"  ''Lake,"  "Xew 
York,"  and  "(jfalen."  185:3,  xT.  )'.  SKprcme  CY., 
>S'.  7\,  Stokes??.  Landgraff,  17  7ir//7>.  008;am'dat 
G.  T.,  Sept.  1854. 

jj  04().  A  name  niav,  in  some  cases,  be  rightfully 
used  and  protectedas  a  trademark.  But  this  is  only 
true  where  the  name  is  used  as  indicating  the  ti'ue 
oj'igin  or  ownership  of  th*.^  article  olfered  for  sal(3  ; 
never  where  it  is  used  to  designate  the  article  itself, 
and  has  become  by  adoption  and  use  its  proper 
appellation.  1857,'iy.  Y.  .'<iiperior  CL.  S.  T.,  Fet- 
]-idge  (\  W^^lls,  4  iVhb.  Pr.  144;  S.  C,  i:}  IIoic.  Pr. 
'.i'S:).     See  Fetridge  «.  Merchant,  4  Ahh.  Pr.  150. 

§  047.  When  a  new  preparation  or  compound  is 
offered  for  sale,  a  distinct  and  specihc  name  nuist 
necessarily  be  given  to  it.  The  name  thus  given  to 
it,  no  matter  when  cu'  by  whom  imposed,  becomes 
by  use  its  pro^^er  appellation,  and  passes  as  such 


I; 


■ 


i 


21G      l^DescrlptiGe]     Name.      [na/Nc  atid  icorc/s.  \ 

into  one  common  language.  Ilenco,  all  who  liiive 
an  equal  I'iglit  to  manufacture  and  sell  tlie  article, 
have  an  ecjual  right  to  designate  and  well  it  by  its 
ai)|)i'opriate  name,  the  name  by  which  nlone  it  is 
distinguish'ul  and  known,  provided  each  person  is 
careful  to  sell  the  article  as  pieinired  and  mana- 
factured  by  himself  and  not  by  jinother.  AVJien 
this  caution  is  used,  there  is  no  d(  ('e[>tif)n  of  which 
a  rival  manufacturer,  not  even  the  manuliu^turer  by 
whom  the  distinctive  name  was  first  invented  or 
ado[)ted,  can  justly  complain  ;  and  so  far  from 
there  being  any  imposition  upon  the  public,  it  is  the 
use  of  the  distinctive  name  that  gives  to  purchasers 
the  very  information  which  they  are  entitled  to 
have.  In  short,  an  exclnsive  right  to  use,  on  a  label 
or  other  trademark,  the  approi)riate  name  of  a 
manufactured  article,  exists  only  in  those  who  have 
an  exclusive  property  in  the  article  itself.  This, 
however,  is  a  species  of  proi)erty  unknown  to  the 
law,  and  that  can  only  be  given  to  one  by  the  infringe- 
ment of  the  rights  of  all.  Ilrhl,  that  the  i)lainrilt's 
have  no  exclusive  property  in  the  words  '"  lialm  of 
Thousand  Flowers."  Ibid.  ]3ut  see  Fetridue  i\ 
Merchant,  4  Abb.  Pr.  150. 

§  048.  Whei'e  a  person  forms  a  new  word  to 
designate  an  article  made  l)y  him,  which  has  never 
l)een  used  before,  lie  may  obtain  such  a  right  to 
that  name  as  to  entitle  him  to  the  sole  use  of  it  as 
against  others  who  attempt  to  use  it  for  the  sale  of 
a  similar  article  ;  but  such  an  exclusive  use  can 
never  be  successfully  claimed  of  words  in  comnuHi 
use  previously,  as  applicable  to  similar  articles. 
Words  as  used  in  any  language  cannot  be  appro- 
priated by  any  one  to  his  exclusive  use  to  designate 
an  article  sold  by  him  similar   to  that  for  which 


'v   Ml 

^1) 


5  i 


[Bescrij^lice  name]    Name.      [and  icor(Js.\     217 

they  were  previously  used.  That  is,  no  pci-so)!  cnu 
acquire  a  right  to  the  exclusive  use  of  words,  ap- 
plied as  the  name  of  an  article  sold  l)y  hini,  if  in 
their  oi-dinary  acceptation  they  desiuniitc  the  same 
or  a  similar  article.  IfcJcf,  that  as  it  wiis  very 
doubtful  whether  plaintift'  had  any  I'iu'lit  to  the 
exclusive  use  of  the  name  ''Schiedam  Schnapps"' 
for  <2:in,  and  his  I'iglit  being  denied  by  the  defend- 
ant, tliat  a  preliminary  injunction  restiaining  the 
use  of  those  win'ds  by  defendant  slionld  ))e  dis- 
solved. 18:)0,  N.  Y.  ^Kpreine  Lhnrf,  H.  7'.,  Wolfe  t\ 
Goulard,  18  How.  Fr.  04.     But  see  ;^;^  (5(51,  (5(54.  1021). 

§040.  No  dealer  in  any  commodity  can  b(>  pio- 
tected  by  injunction  in  the  exclusive  use  simply  of 
a  name  by  which  to  designate  it,  which  do(>s  not 
express  the  origin,  ownershi]),  or  i)lace  of  manufac- 
ture or  sale  of  the  article,  but  merely  its  quality, 
kind,  texture,  composition,  utility,  destined  use  or 
class  of  consumers,  or  some  other  attril)ute  which 
it  has  in  c(mimon  witli  other  similar  cominodities. 
Hence,  the  term  ''Club  nouse,''  as  a  designation 
for  gin,  was  not  i)rotected,  it  being  established  thtit 
such  name  had  been  long  in  use  as  designating  a 
sui)erior  kind  of  gin  used  in  such  establishments. 
1800,  iY.  Y.  /Superior  Court,  G.  7'.,  Corwin  v.  Daly, 
7  Bo.sw.  222. 

§  0.")().  The  court  will  restrain  the  use  by  a  third 
party  of  an  arl)itrarj^  fancy  name,  which  a  plaintilf 
has  invented  and  applied  to  a  particular  class  of 
goods  as  sold  l)y  him  and  which  has  thus  become 
identified  with  the  plaintiffs  goods.  But  where 
the  plaintiff  invents  or  discovers  a  product  to 
which  he  gives  a  name,  not  as  a  fancifid  l)ut  as  a 
descriptive  name,  and  it  becomes  identilied  with 
the  plaintiff's  goods,   so  that,  by  the  use  of   the 


'  i 


a: 

■■.   ill 


L      , 


I  I 


1   m 


m 


■'sir 


Ki'    .;(■ 


i't^ 


1:1' 


1 

ti»- 

rl^^^^^^Hil  ' 

! 

r 

( 

,/5. 

".*■-■■   j 

i 

11 

■ 

218      \_Descrlptim'\     Name,      [naine  and  loords.] 

name  alone,  his  goods  would  be  referred  to,  not  be- 
cause tliey  are  the  plaintilf  s,  but  because  he  alone 
as  patentee  can  make  and  sell  them,  the  defeiKhint 
Avill  not  be  enjoined  I'rom  using  the  luune  lixed 
upon  by  the  patentee,  for  similar  got)ds,  manu- 
factured in  such  a  way  as  not  to  infringe  Ihe 
patent.  Hence,  the  use  of  the  words  "Parafliue 
Oil"  was  not  enjoined.  180:2,  TVcc.  0/(.  Wofx/'.s 
CL,  Young  V.  Macrae,  9  Jurist  {N.  *S\)  '^'22. 

%  051.  A  word  Avhich  is  the  nmtieoi  the  article,  or 
indicates  its  quality,  is  not  cai)able  of  an  c^xclusive 
use  as  a  trademark.  Every  one  has  the  right  to 
manufacture  the  same  article  and  to  call  it  bv  its 
name  or  descriptive  character.  In  doing  so,  there 
is  no  violation  of  propriety  or  of  truth,  nothing 
which  intrudes  upon  the  distinctive  province  of 
others.  Were  it  otherwise,  monoiiolies  might  be 
created  which  would  be  destructive  of  the  freedom 
of  trade.  Hence,  any  one  has  the  right  to  make  an 
extract  from  the  liower  known  as  "The  Aight 
Bloonung  Cereus,''  and  to  call  it  what  it  is,  by  the 
name  of  the  liower,  and  his  use  <jf  those  words  Avill 
not  be  enjoinetl.  1804,  6Y,  o/*  Com.  Pleat;,  Pldl. 
Pa.,  Phalon  i\  AYright,  5  Phil.  404. 

j5  or)2.  \Vords  that  do  not  denote  the  goods  oi' 
property  or  particular  place  of  business  of  the 
plaintiiV,  but  only  the  nature,  kind  or  quality  of 
the  article  in  which  he  deals,  are  never  the  subjects 
of  trademarks.  Hence,  no  title  can  be  acquired  to 
the  words  "Old  London  Dock  Gin."  But  where 
the  name  of  the  manufacturer  is  appended  to 
such  title  Jind  a  style  of  bottle  and  label  used  which 
liave  a  general  reseml)lance  of  form,  symbols  and  ac- 
conr[)animents  to  those  oi  the  i)li>intiff,  and  are 
therefore  calculated  to  deceive  the  public,  the  plain- 


[  k 


[Deseri/dice  name]     Name.      [and  words.]     210 

tiff  will  be  i^i'otected  by  injunction.    1 SC),  ^T.  V. Com . 
Pleafi,  K  T.,  Binninger  t\  Wattles,  28  //(,w.  Pr.  200. 

§  0.");},  A  tnidenuii'k,  which  is  nunely  desci  ii)tive 
of  the  kind  of  articles  <jr  <i;()()ds  to  which  it  is  ap- 
plied, is  not  a  trademark  in  a  lei-'al  sense,  and  is 
not  entitled  to  jji'otection  as  such.  Hence,  where 
tlie  name  of  ''Il^lbrook''  and  "  llolbrooks,''  as 
ai)plied  to  school  ai)pai'atus,  liatl  1)ecome  generic, 
and  descriptive  merely  of  the  class  ol.'  articles  nian- 
nfactured  to  elucidate  asti'ononiy,  geography  and 
geometry  in  schools,  protection  to  said  names  was 
refused.  1800,  Superior  CI.  of  Clilcaijo,  Sherwood 
t.  Andrews,  >")  Am..  Law  Rnj.  {X.  S\)  iiSS. 

jj  004.  In  1847,  Baron  \'on  Liebig  discovered  and 
pid)lished  a  process  for  making  an  extract  of  meat. 
The  extract  was  made  extensively  at  the  Koval 
Pliarmacy,  Municli,  and  sold  tliere,  with  the  i)er- 
niission  of  the  baron,  as  Liebigs  extract  of  metit, 
from  1801  to  1804.  It  became  generally  known  in 
Grermanv  and  other  countries,  and  the  term  Liebig' s 
extract  of  meat  became  used  as  a  term  oi  art  in 
scientiUc  treatises.  In  1804,  Baron  Liebig  gave  the 
Fray  Bentos  Company  the  right  of  nsing  his  name 
in  connection  with  the  extract  ol'  beef  niannfa(;tured 
by  them.  Li  1804,  the  plaintiff's  company  l)onght 
the  bnsiness  and  property  of  the  Fray  Bentos  Com- 
pany, and  by  a  deed  j)oll,  dated  April  12,  1800,  the 
baron  granted  to  the  plaintiff's  company  the  exclu- 
sive right  and  privilege  to  nse  his  name  in  connec- 
tion with  the  extract  manufactui'ed  by  them.  The 
defendants,  who  had  previonsly  sold  extract  manu- 
factured by  the  Fray  Bentos  Company,  in  1800, 
began  to  sell  as  " Liebig' s  extract  of  meat"  an 
extract  manufactured  by  a  Mr.  Tootli,  in  Australia, 
after  Liebig' s  process.     On  a  suit  being  instituted 


■  -M  i 

;• 


220      \_Descrq->tlre\      Name.       {iiauie  and  words.] 


II.  ''< 


|i  :,/ 


11  ■.■/■ 


i^  I,;;: 


by  tlio  pljiintilT's  c()nii)any  to  re.stniiii  tlic  defeii- 
daiits  from  so  using-  tlie  mime  Liebig's  extract  of 
meat,  the  court  Jidld^  that  the  term  having  been 
used  as  a  term  of  art  to  designiite  a  well  known 
process  before  18G1,  the  defendants  were  fully 
justified  in  using  it,  and  the  bill  was  dismissed  with 
costs.  1807,  Vict  Ch.  Wood' s  CI..,  Liebig's  Extract 
of  Meat  Company  (^limited)  c.  llanbury,  17  Lain 
Times  It  {N.  .s'.)^2!)8. 

§  055.  A  manufacturer  cannot  accxuire  a  s[)ecial 
property  in  an  ordinary  term  or  expression,  the  use 
of  which  as  an  entirety  is  essential  to  the  correct 
and  trutliful  designaticm  of  a  particular  article  or 
compound.  Thus,  a  dealer  in  salt  hsh  can  not 
maintain  an  exclusive  claim  to  the  use  of  the  term 
"dessicated  cod-lish"  as  a  trademark.  It  is  a 
sequence  of  the  right  of  eacli  party  to  dessicate 
cod-lisli  that  he  may  sell  the  article  tlius  produced, 
under  the  designation  which  is  strictly  a])propriate 
to  the  altered  or  modified  condition  of  the  principal 
ingredient.  A  dealer  may  distinguish  liis  ''dessi- 
cated  cod-fish"  as  the  "Bismarck"  or  tlie  ''  \"on 
Buest,"  or  by  the  prefix  of  any  other  proper  name 
or  common  word  not  previously  applied  in  that 
connection,  and  not  essential  to  the  truthful  desig- 
nation of  the  article  produced,  and  he  will  be  pro- 
tected in  its  exclusive  use.  But  he  can  no  more  ac- 
quire a  special  i^roperty  in  the  word  "dessicated,*' 
as  applicable  to  an  article  which  lias  undergone  that 
process,  than  he  can  to  the  words  "dried,"'  "pre- 
served" or  "  pi(!kled,"  as  applied  to  that  which  has, 
in  fact,  been  thus  treated.  It  appearing  that  no 
attempt  had  been  made  to  deceive  the  public  or  to 
palm  off  the  defendant's  dessicated  cod-fish  as  that 
of  the  plaintiffs'   manufacture,   tlie  temi)oi'ary  in- 


I  (1/ 


\_Descrl2iHv(' name]      Nami:.      [and  words.]      221 


junction  was  dissolved.  1SG8,  X.  V.  Com.  I^/cas, 
'S.  T.,  Town  /'.  Stetson,  o  Ahb.  Pr.  {X.  *s'.)  218;  S. 
C,  allii'nied,  J>  />r////,  oii. 

§  Or)0,  Althoiigli,  l)y  tli(^  lonu'  continued  use  of 
cei'tiiin  letieis,  tiuuies,  Avords,  marks  or  syuibols, 
wliich  do  not.  ol"  tlieiiiselves,  and  weiv  not  desiu'iied 
to  indicate  the  oi'igin  or  o\vnei'slii[)  of  tlie  ^oods  to 
"whicli  tih^v  are  attached,  but  oulv  to  (h'siu'iiate  the 
nature,  kind  or  quality  of  the  di'.l"ei(>nt  vaiieties  of 
the  article,  and  because  so  marked,  the  i^oods  liave 
become  known  as  those  of  the  manufacturer  wJio 
lii'st  used  them,  such  fact  cannot  alter  ihe  oiii^iiial 
meaninii:  of  the  words  or  svnd)ols.  or  the  intent  with 
which  I  hey  were  first  used,  as  denotinii,-  th(^  name  of 
the  tiiin,i>\  or  its  <i;eneral  or  lelative  (quality,  or  take 
fi'om  othei's  the  right  to  employ  them  in  the  same 
sense.  !So  where  a  manufacturer  of  [)lo\vs  jjlaced 
upon  them,  for  the  purpose  of  desiu'nating  the  size, 
shape,  and  quality  of  lli<'  diil'erent  plows  upon 
which  they  were  resj^ectively  branded,  the  letters 
and  tigiires  in  their  coiiil)inations  as  follows:  "A 
No.  1,  A  X  Xo.  I.  Xo.  I,  X  Xo.  1.  Xo.  ;',  and  B  X'o. 
1,"  it  was  //(Id.,  he  iuuL  no  exclusive  right  to  their 
use  for  such  puipose,  but  they  could  be  used  by 
any  other  manufacturer  of  plows,  in  the  same  com- 
binations, to  indicate  like  varieties  of  tlu^  same 
article.  1870,  Supreme  CI.  of  Illtj/o/.s,  Canck^e  ?\ 
Deere,  r)4  IH.  4:)!). 

§  O.')?.  The  defendants  resisted  an  application  foi' 
an  injuiujtion  to  restrain  an  alleged  violation  of  a 
trademark  on  the  ground  (^among  others;  that  the 
plaintitrs  tiademark  was  composed  of  letters, 
words  and  cliaractei's  denoting  the  quality  of  tlie 
article  to  which  thev  were  affixed.  liA>'D,  J.  :  "I 
find  some  authorities  that  hold  there  can  be  no 


'•■'■■'"'I 

■ :  j ! 
''■'1 


;i 


k 


222      [Dcscriptioe]      Xame.      [name  mid  /cords.] 


'■* 

il!^  ■ 

'i'      ' 

."''•':                     i 

jrr 


ili 

It     ''. 


1^    .^'' 


exclusive  right  to  a  trjideiiiaik.  wliicli  only  de'iiotes 
the  qiinlity  of  tlie  ni-tiele  iiinnufiu'tni'rd.  I  believe, 
however,  the  Aveight  of  nutlrority  is  the;  other  way. 
Tlie  later,  and  it  seems  tome,  the  better  authorities, 
establish  tin.'  [)i'oposition  that  a  trademark  may  be 
ecmiposed  in  part,  if  not  entirely,  of  words,  letters 
and  characters,  that  denote  the  cpiality  of  the 
article.  If  a  tiad(Mnark  is  once  established,  I  hohl, 
whatever  its  design,  it  will,  to  some  extent,  neces- 
sarily indicate  to  the  public  the  quality  of  the 
article.  But  if  I  am  mistaken  in  this,  still  I  am  of 
opinion  that  the  plaintiifs  trademark  does  desig- 
nate much  more  than  the  simple  quality,  or 
quantity  of  the  lionr  in  the  barrel,  and  thei-efore  is 
entitled  to  protection  from  infringement."  1871, 
Indianapolis  Superior  Ct.  R  7\,  Sold  r.  Geisen- 
dorf,  1  Wilson,  GO  (Ind.). 

§  GoS.  Xo  one  has  aright  to  appropriate  a  sign  or 
symbol  Avhich  from  the  natui-e  of  the  fact  it  is 
meant  to  signify,  others  may  em])loy  with  eqnal 
trnth  for  the  same  pnrpose.  jS^ames  having  a 
definite  and  established  meaning  in  the  language, 
and  which  do  not  indicate  origin  or  ownership,  or 
something  equivalent,  can  not  be  apjiropriated  by 
one  so  as  to  exclude  a  similar  use  by  others.  No 
property  can  be  acquired  in  words  or  marks  which 
do  not  denote  the  goods  or  property,  or  particular 
place  of  business  of  a  person.  No  i)erson  by  prior 
use  can  acquire  an  exclusive  right  to  the  words 
"Mammoth  Wardrobe"  as  a  sign  or  designation 
where  a  large  amount  of  clothing  is  kej^t.  1871, 
2Tlchlgan  Circuit  CL,  Gray  v.  Koch,  2  Mich.  N. 
P.  119. 

§  659.  The  owner  of  a  peculiar  product  of  nature, 
like  natural  mineral  water,  who  has  applied  to  it  a 


m 


\_Descr}j)tlTC  nam/']      Xa.mk.      ['''//''''  ii''>rr7.'^.]     '2'2] 


I*, 


conventional  nainp,  bv  Avliicli  it  hns  beronip  licn- 
orally  known,  and  under  wliicli  it  has  been  exten- 
sively sold  l»y  him  as  a  nscrul  aiticlc,  is  entitled  to 
be  protected  in  the  exclusive  use  of  such  name  as 
his  trademark  in  the  sale  oi'  the  ai'ticlc.  J8TI.  X 
Y.  Court  of  Appeals,  Congress  Sc  Kiui)ir('  Sjn-ini;' 
Company  ??.  TIi;L;,'h  liock  Congress  S[)rinij;  (.'omj)any, 
45  zY.  Y,  291;'  S.  C,  10  Ahh.  I'r.  (X  X. )  IMS ; 
reversini?  S.  C,  o?  Barb.  520. 

j^  GOO.  A  j^eneiic  nj<me  (n*  a  name  merely  descriptive 
of  an  article  of  trade,  of  its  qualities,  inu-redi(>nts,  or 
characteristics,  cannot  be  employed  as  a  tradcmtii'k. 
1871.  (J.  K  F^uprc.me  C/.,  De'lawai-e  c^-  Hudson 
Canal  Company  r.  Clark,  113  Wall.  Dll. 

j5  001.  A  wend,  figure,  &c.,  in  conmum  use,  which 
indicates  the  name,  nature,  kind,  quality,  or  charat;- 
ter  of  the  article,  cannot  be  appropriated  as  a 
trademark.  The  word  "Schnapps,'"  which  has  long- 
been  in  use  to  designate  gin  manufactured  at 
Schiedam,  cannot  be  appropriated  as  a  trademark 
for  gin,  in  the  United  States,  even  if  its  former  use 
liad  been  confined  to  Europe.  1873,  Supreme  Ct. 
ofCaL,  Burke  d.  Cassin,  45  C«/.  407.  See  ^§  048, 
004,  1029. 

§  022.  The  word  "Schiedam"  cannot  be  adopted 
as  a  trademark,  because  it  has  hmg  been  used  to 
denote  quality  or  kind.     Ibid. 

§003.  The  word  "aromatic,"  when  employed  to 
express  one  of  the  qualities  of  liquor,  cannot  be 
jirotected  as  a  trademark.     Ibid. 

%  004.  The  employment  in  a  trademark  of  a  term, 
which  is  the  true  generic  designation  of  the  mer- 
chandise, cannot  give  any  exclusive  right  to  employ 
it.  Hence  the  word  "schnapps,"  intending  abroad 
alcoholic  drirkin  general,  and  in  common  use  here, 


16 


rf- 


■  V. 


4\. 


i  ,<S' 


4 


224      [Dc'scn'j}lloe\      Namk.      [naiie  and  worcln.'] 

Ilolhind  ^nii,  iiiiiy  not  ))e  ox(']nsiv<']y  {ii)}m)i)ritited 
for  tiadcniark  i)iii'pose.s.  187;},  N.  Y.  ^^iiprcme  CI. 
(J.  7'.,  WollV  (\  Jiuike,  7  L((n.^.  j:)l  ;  S.  C,  reversed 
oil  nnotlier  i)oiiit,  .")()  X.  Y.  i\7). 

^  (K).").  Protecfion  jdt'oided  to  Inideninrks  rests 
upon  tlie  ])i'iiK'iple  ol'  preventing  w,  iVjuidiilent  iip- 
pi-opriiilion  of  n  nnnie  by  wliicli  only  tin;  product  or 
nnniil'actui'e  of  anotlier  is  designated,  and  of  shield- 
ing tlie  pnl)lic  against  deception  by  such  means. 
The  a])pi'opriate  and  distin<^tive  name  given  to  a 
neu' commodity  be(;onies,  l)y  use,  its  proi)er  appella- 
tion, and  parses  as  such  into  our  hinguag(%  and, 
excepting  lights  secured  by  patent,  may  be  used  in 
manufacturing  and  selling  the  article  by  any  one. 
(rerdFLUKiiT,  J.)     Ibid. 

%  000.  A  \ras  the  manufacturer  of  certain  stout 
known  as  " Nourisliing  Lond(»n  iStout,"  and  had 
adopted  and  registered  a  circular  trademark  oi' 
label  with  sucli  words  inscribed  upon  it,  B  carried 
on  th(^  trade  (*r  business  of  wine  and  ale  merchants 
and  had,  subsequently  to  the  registration  of  the 
j)Iaiutilfs  label,  adopted  an  oval  trademark  or 
label  with  the  words  "-Nourishing  Stout"  inscribed 
upon  it.  Held.,  that  an  injunction  could  not  l)e 
granted  to  restrain  B  from  using  the  label  with  the 
inscription  "Nourishing  Stout,"  the  word  "nour- 
ishing" being  merely  descriptive  of  the  quality  of 
the  manufacture.  1873,  Vice  (Jh.  JIaliu6-,  Raggett 
T.  Findlater,  43  L.  J.  Ji.  {JV.  .S.)  Ch.  04;  S.  C^,  L. 
li.  17  Eq.  29  ;  S.  C,  29  L.  T.  li.  {N.  8.)  448  ;  S.  C, 
22  TF.  11.  m. 

"i  007.  Tliere  is  no  principle  more  lirmly  settled  in 
the  law  of  trademarks,  than  that  words  and  phrases 
which  have  been  in  common  use,  and  which  indicate 
the  character,  kind,  quality,  and  composition  of  the 


\_Dcscr}ptivcnamc\     Name,      [and  words. 1     22;'5 


tliino;,  nuiy  not  be  appropiinfcd  by  nny  one  h>  liis 
excbjsivo  use.  In  tlie  excbisive  use  of  tUcin  flie  hiw 
■will  not  jd'otect.  nor  docs  it  iniitlfM'  tliiit  the  foi'iu  of 
Words  o)'  i)lii';isos  adopted  also  indicates  llic  oiinin 
and  niakei'  ol'  the  article.  The  combination  ol' 
Avords  niMst  express  only  the  latt<M'.  Jt  is  the 
result  of  all  the  decisions,  tliat  known  v/oids  and 
phrases  indicative  of  quality  and  composition  arc 
the  common  propei-ty  of  all  mankind.  They  may 
not  l)e  a])))ropriated  hj  one  to  mark  an  ai'ti<'l<'  of 
Ills  manufactui'e,  when  they  may  be  used  ti'iUliriiHy 
by  anotiier  to  inform  tlie  i)ii])lic  of  the  inurcdiciits 
which  make  up  an  article  made  by  Jiim.  Kven 
when  the  sole  purpose  of  the  one  who  iii'st  uses 
them  is  to  form  of  them  a  trademark  l'(jr  liimsclf, 
expressive  (Uily  of  origin  with  himself,  if  they  do 
in  fact  show  forth  the  quality  and  compositicm  of 
the  article  sold  by  him,  he  may  not  be  protected  in 
the  exclusive  use  of  them.  Still  less,  then,  when 
Joined  to  the  fact  that  they  do  thus  show  forth  the 
quality  and  composition,  tliere  is  a  purpose  that 
they  should  do  ho.  1874,  N.  Y.  (Jt.  of  Appeals, 
Caswell  i.\  Davis,  AS  i\^.  T.  221] ;  overruling  S.  C, 
85  IIou\  Pr.  7(5 ;  4  Ahh.  Pr.  {N.  K)  0. 

§  008.  It  is  a  right  which  everyone  has,  and  from 
the  exei'cise  of  which  he  may  not  be  debarred,  to 
make  an  article  of  the  same  ingredients,  of  tlie  same 
composition,  and  of  as  good  quality  as  tliat  made  by 
another,  Avhen  tliat  other  has  no  exclusive  privilege 
of  manufacture  conferred  by  law.  Having  this 
right  to  make,  he  has  also  the  right  to  Indicate  the 
ingredients,  the  composition  and  quality  of  that 
Avhich  he  has  made,  by  any  words  or  phrases  apt 
therefor.  Hence,  wdien  he  adopts  usual  phrases 
which  do  no  more  than  this,  he  but  takes  from  a 
15 


Mi 


220     [Deso'ipiive]     Name.      [name  and  icorfh-.] 


■m  ^ 


stock  common  to  all  mankind,  and  docs  not  in- 
fringe upon  any  exclusive  right  of  anot'nci',  avIio 
has,  before  that,  used  the  same  or  like  Avoids  or 
phrases.  Nor  can  the  ili'st  user  avoid  this  lesiilt 
by  coupling  with  his  pur])ose  to  indicate  quality 
and  chai-acteristics,  ji  purpose  also  to  indicate 
oi'igin.  Though  he  have  that  purpose  also,  and 
the  foi'm  of  woids  used  by  him  have  also  that 
elVect,  inasmuch  as  he  can'iot  be  given  the  exclu- 
sive use,  M'ithout  impairing  the  right  of  another, 
the  exclusive  use  will  be  denied.  'J'he  general  I'ule 
is  against  appropriating  mere  words  as  a  trade- 
mark. An  exception  is  of  those  indicating  origin 
or  ownership,  having  no  reference  to  cpuUity  or  use. 
AVords  are  but  symbols.  When  they  are  used  to 
signify  a  fact,  or  when,  with  what  purpose  soever 
used,  they  do  signify  a  fact  which  others  may,  by 
the  use  of  them,  express  with  equal  truth,  others 
have  tin  equal  right  to  them  for  that  purpose. 
JbI(L 

^  (500.  Nor  is  the  question  whether  the  name 
used  as  a  trademark  will  convey  an  exact  notion  of 
how  CO  compound  an  ai'ticle,  so  that  one  reading  it 
may  be  able  to  make  a  like  article.  If  the  neces- 
sary elfect  is  to  inform  the  reader  or  heaivr  of  the 
general  characteristics  and  composition  of  the  thing, 
it  is  a  name  which  may  be  used,  with  equal  truth, 
by  any  one  who  has  made  and  offers  for  sale  a 
thing  compounded  of  the  same  ingredients,  and 
who  desires  to  express  to  the  public  the  same  facts. 
Nor  does  the  coapling  together,  in  a  new  combina- 
tion, of  words,  which  before  that  had  been  used 
apart,  and  had  entered  into  the  common  or  scientific 
vocabulary,  give  a  right  to  the  exclusive  use  of 
such  combination,  where  it  is  indicative,  not  of 


[Deficript Ice  name]      Xamk.      [a ltd  words.]      ^2'21 


ori(2;in,  iiinker,  nrsf>  and  ownersliip  alone,  bnt  also  of 
<inalify  and  otliei'  rliararteristics.      fhid. 

ii  070.  Plaintiffs  pi-<'])ai'fMl  a  intMlicinc,  flic  ])iMn- 
cipal  ingi'fdients  of  which  w«m'o  ii-on,  ])hosi)li()i)is 
and  olixir  of  calisaya  bai'k,  to  which  tliry  <j,iivc  tli'' 
name  of  "  F(MTo-Phosphoi"ited  Klixii'  (»r  ('alisay:i 
Bark,"  and  so  labeled  the  l)ottles  containiiii;'  it. 
JlelfJ,  tiiat,  as  it  appeared  from  tlie  restimony  in  ili" 
case,  that  the  phiase  claimed  by  the  phdnrilVs  \\;i^ 
formed  of  words  in  use  Ixd'ore  the  adoption  theicur 
by  them  :  that  they  were  tlien  and  a le  indicative 
not  of  oriirin,  nse  and  owneiship  alone,  bnt  also  <  f 
characteristics,  ([uality  and  com[)osition  :  that  t  !ip 
said  i)hrase  cordd  not  be  protected  as  a  trademark, 
and  tliat  the  defendant  wonld  not  be  enjoined  fioni 
their  nse  upon  labels,  devices,  &c.,  which  wcic 
calcnlated  to  deceive  the  pnblic,  and  to  in(bic(3  the 
belief  that  the  ai'ticle  which  lie  sold  wa.s  the  ,saiii<^ 
as  that  made  and  sold  i)y  the  i)laiiitilfs      J  hid. 

>J  (>7"i.  The  defendant  uscmI  labels,  devices,  kv.. 
calcnlated  to  deceive  the  ]»nblic,  and  to  induce  a 
a  belief  that  tlu;  elixir  which  he  sold  was  the  sam^* 
as  that  made  and  sold  by  the  plaintiffs.  The  ])]ain- 
tiffs  soni>,'ht  to  have  the  defendant  <Mijoincd  fioin 
nsinLi:  certain  woi-ds  on  such  labels  which  tliey 
claimed  constituted  their  trademark.  Held,  that 
althoniiii  the  courts  would  Ix^  desirous  of  re^-itrainiiia,' 
and  punishing  the  designed  interference  with  tlh' 
business  of  the  plaintiffs,  as  the  words  did  not  c(  u- 
stitnte  a  trademark,  the  injunction  should  lie 
denied.  1874,  N.  Y.  Court  of  Appeal.^.  Caswell  r. 
Davis,  :)d^  N.  Y.  '22:1 

i^  071?.  An  exclusive  right  cannot  be  acquiied  to 
the  nse  of  the  words  '"gohl  medal"  as  a  trademark 
upon  the  wrappers  of  a  manufactured  article.     Tlie 


228      [Drscrtptive]     Name.      [^name  and  words.'] 


.'-i\ 


I!  • 
1 


I 


m 


words  so  used  do  not  indicate  ownership  or  origin, 


but  quality,  and  that,  in  some  c 


ompetitive  ex 


hil)i- 


tion,  a  ^old  medal  h:ul  been  awarded  to  the  aiticle 
for  its  excellence,  and  so  they  cannot  be  appropri- 
ati'd  as  a  trademark.  1874,  jV.  Y.  dourf of  AppeaU, 
Taylor  r.(rillirs,  oO  N.  Y.  831 ;  alll'g  S.C.,  5  Dcdy,  2i>:). 
%  074.  The  applicants,  who  were  iron  masters,  hud 
for  some  time  i)rior  to  the  pnssing  of  tlie  Tr:i  ' 
marks  Kegisti'ation  Act,  187.")  (:}8  k  39  Vid.  c.  1)1. 


.1(1  :5'.)  &  40   Vicf.  c 


been  in  tlu'  ha1)it  of  usiiii 


!is  trademarks  the  initials  of  their  oi-iginal  iirm,  the 
name  oC  their  works,  or  an  abbreviation  of  it,  and 
(•onil)inatio!is  of  them,  and  also  these  marks  coii))led 
\\'\\\  symbols  o."  words  denoting  the  i)articular 
quality  oi'  the  ir<*ii.  The  registrar  ol'  trademaiks 
was  willing  to  register  as  trademai'ks  the  initials, 
and  tluMiame  of  the  works  and  ahbi'eviation  and 
tlieii'  combinations,  but  I'efused  to  register  the 
nuirks  which  contained  tln^  symbols  or  woi'ds  de- 
noting quality.  On  motion  bel'oi'e  Maijxs,  \'.  (!., 
that  the  rf'gistrar  might  be  dii'ected  to  register  tli(3 
Avhole  of  th(^  marks  clainn^d  :  I[(  Id,  that  tlie  sym- 
bols and  words  denoting  qnidity.  though  l)y  theiu- 
sel\(^s  not  trademarks,  yet  were  trademai'ks  in 
combination  with  the  initials  and  the  name  of  the 
works,  a.nd  abbreviations  and  their  combinations, 
and  weie  entitled  to  legistration.  On  appeal  by 
the  registrar  of  ti'adeniaiks,  the  court  of  ai)])eal 
were  of  o[)inion  that  the  j)roj)er  foi'm  of  I'egistration 
would  be  "'B.  15.  II.,  used  either  alone  or  in  coni- 


l)ination  with  a  crown,  ln»rse-shoe,   or  crown  an( 


I 


aoi'se-shoe,  oi"  with  any  other  mai'k,  device  or  word 
ignifying  the  (pialily  ol'  the  iion,"  and  such  order 

■/as  made  by  agreement.  1877,  Uh.  Ct.  of  Appad, 
' n.  rv  jjai'row's  A[)plicati(ni,  25  IF.  Ih  004;  ►>.  C, 


:^Wi 


nii] 


[Descr/jy^he  7ia7?ie]      Name,      [and  icoi'ds.]     220 

below,  3G  L.  T.  11.  (X  /<)  291 ;  S.  C,  25  IF.  7^.  4o7  : 
S.  C,  40  L.  J.  11.  (/Y.  .s'.)  C7/.  4o(\ 

§  (575.     Tlie   court   at  spt'cial  term   found   tliar 
l)lamtilf.s,  ill  1842,   luid  oiiiiinated  a  luedicine  t'oi" 
the  cure  of  diseases  of  tlie  llii'oat,  A:c.,  for  wliicli 
they   tlien   devised  and   conmienced   to    use   us   ;i 
tradeniaik,  to  designate  the  origin,  owjinsliii)  niid 
pai'ticular  manufacture  of  tlie  article,  in  connection 
with  the  name  "Ayei',''  the  words  '*  Cherry  Pec- 
toral,''   which    combination,    "  Clieriy    iN'ctoral," 
was  oriuinal  and  not  previously  used.     Thar  the 
word  "Pectoral,"  though  known  as  an  adjective, 
was  then  of  rare  and  infrecpient  use  as  a  substan- 
tive.    That  said  words  "  Cherry  "  and  "  i'ect(»ial," 
suggested,    partially,    the   oiigin  and   use   of    the 
aiticle.     That  the  extract  of  wild  i-heiry  was  one 
of  the  ingredients  thereof.    That  said  article  be  •anie 
well-known  to  the  public  under  its  name  and  title 
of   "Ayer's  Cherry  Pectoral,''  and  "Cherry  Pec- 
toral;"   was  commonly  known  aiiumg  dealeis  as 
''Cherry  Pectoral;"  and  tiiat,  by  association  wiili 
the  name  of  Ayer,  and  long-continued  and  uninter- 
rupted use.    tile  title  "  Cheriy  Pectoral"  became 
estalilishi'd  as  plaintiffs'  trademark.     That  it  was 
geneially  uiidei-stood  l)y  purchasers  tliat  the  title 
"Clierrv  Pcctoial,"  referred  to  and  meant  "Axel's 
Clierrv   Pectoral,"   and   none   other.     >>aid   article 
was  a  liquid  of  a  dee})  saiTron   color,  put    up  in 
oblong,   Hat,  clear  glass  bottles,   containing  alxait 
six  ounces,  ui)on  whicli  l)otth^s  were  stamped  the 
words,    "Ayer's    Cherry    Pectoial."      The   bottles 
were  enclosed  in  a  paper  Aviai)per  of  a  dee[)  orange 
coloi',  bearing  tin;  print(»d  words,  "Ayer's  CluMry 
Pectoral  f(n'  the  var'ous  aifecth)ns  of  the  lungs  ami 
throat,  such  as  colds,     .     .     .     Picpaicd  and  sol  ' 


230     \^Desc)'i]7tltc]      Name,      [imme  and  icorcls.'] 

by  J.  C.  Aver,  Lowell,  Massacliusetts.  Price  One 
I)ol]ai'.''  In  1801),  defendant  c(>niin(Miced  to  make 
and  sell  ii  medicine  for  conirll^<,  A:c.,  Avliicli  he 
called  "  ClieiTy  Pectoral  Tioclie.s;''  said  article 
Avas  in  the  form  of  lozenges,  put  np  in  small  jia^tnr 
boxes  of  a  salmon  color,  with  a  tigure  of  a  red  lion, 
holding  ti  scroll  in  his  month,  Avith  the  words 
'•('lieny  Pectoral  Troches"  thei'eon,  and  also  the 
wolds  "Cherry  Pectoral  Troches  foi- coughs  .  .  , 
kc."'  Soon  thereafter,  del'en(Uuit  commenced  to 
s<^ll  and  mannfactnre  a  preparation  of  the  same 
color,  taste,  smell  and  ai)peai'ance  as  plaintilfs' 
article,  and  put  up  in  oblong,  Hat,  clear  glass  bot- 
tles, containing  about  live  and  ii  half  ounces,  of  u 
somewhat  smaller  size,  but  of  the  same  sliape  and 
having  the  same  general  appearance  as  plaintilfs' 
article,  and  having  (m  the  outer  wrapper  of  white 
paper  with  red  print,  in  large  lettering,  the  Avords 
"Cheri'v  Pectoral,"  and  underneath  the  same  in 
smaller  lettering,  the  woitls,  "  Kushton's.  F.  \'.," 
and  on  an  inside  wrapper  the  words  '•  Cheriy  Pec- 
toral." and,  after  some  printed  words  of  descriittion 
and  recommendation,  the  words,  "For  sale,  Avhole- 
sale  and  retail,  by  Hushton  &  Co.,  11  Barclay 
Istreet,  New  York."  Soon  thereafter,  defendant 
changed  the  color  of  Ins  article  to  a  ligliter  shade, 
and  somewhat  changed  the  taste  and  smell  thereof. 
The  articles  made  by  defendant,  as  aforesaid,  con- 
tained the  extiact  of  wild  cherrv.  Defendant  ex- 
tensively  advertised  the  words  "  Cherry  Pectoral." 
for  sale  at  11  Barclay  street,  without  the  name  of 
any  person,  and  had  conspicuously  placed  in  front 
of  liis  premises,  u  sign,  ''Depot  of  the  Cherry 
Pectoral  Company,"  and  inside  his  i)remises  a 
placard,    "Ayer's    Cherry   Pectoral,    One    Dollar. 


M 


Itel 


\l)i'scrtpti}:e  name]      Name,      {and  ■words.']      231 

Rush  ton's  Cherry   Pectoi'iil,  Fifty  Cents.     AVliicli 
will  vou  have  T'     Defendant  instrncted  his  clerks 
to    answer  to  x>iii'chasers   who  called   for   Ay(M'"s 
Cherry   Pectoral,    that    his    Cherry   Pectoral   was 
not  Ayer's,    and   that  all    peisons    inquiring  for 
Clieny    Pectoi'al,    sliould    be    asked    which    they 
wanted— ''Rushtons"  or  ''Aver's,"  and  told  tliat 
RiishtonVs  was  much  better.     The  conrt  also  found 
that  the  said  articles  i)ut  np  by  defendant  were  well 
calculated  to  deceive  and  mislead  purchasers,  Jind 
to  iiiducH  them  to  believe  that  they  were  the  i)laint- 
itl's"  aiticle  ;  and  that  defendant,  well-knowing  that 
said  Avords  and  name,    "Clieiry  Pectoral,"  wei'e 
plaiutiflV   trademark,  and  had  by  long  use  l)ecoiuo 
known  as  designating  plaintiffs'  article,  and  Icnown 
to  the  public  as  their  trademark,  with  the  wrongl'ul 
intent   to   induce   i)archasers   to   believe    that   his 
article  was  the  plaintiffs',  and  with  the  wi-ongful 
intention    of    securing   to  himself   the  benefit    of 
plaintilfs'  trademark,  had  imitated  their  trademai'iv 
so  closely  as  to  mislead  and  deceive  purchasei's. 
Defendant   was   enjoined  from    using    the    woids 
"Clieirv  Pectoral,"   and  from  imitatinu',  &c.     On 
appeal,   the  court  at  geneial   term  held  that   the 
said  findings  as  to  intent,  &c.,  and  as  to  imitation 
wer(^  not  sustained  by  the  findings  describing  de- 
fendant's acts  and   the  respective  articles.     'I'hat 
defendant  had    been    cai'eful   to    distinguish    his 
arth'le  from  plaintiffs',  and  had  taken  pi'ecaulioix 
to   prevent   |Hii'^'hasers   from  being  misled.     That 
although  he  had  taken  advantage  of  the  celebrity 
of  plaintiirs  name,  and  had  hoped  to  gain  :idvan- 
tage   fnmi   the   popularity    ijlaintilfs    aiiicle   had 
acquired,  by  calling  his  medicine  "  Clierry  Pecto- 
ral," and  thus  inducing  peisons  to  try  his  com. 


i?"»  o 


:  /-  J  ■ 


232 


IFcmci/]         Name. 


[name.] 


pound,  if  they  could  be  persuadiMl  that  one 
"Cherry  Pectoral"  was  as  good  as  another;  and 
had  ])i'()i)osed  to  build  up  a  business  ui)()n  and  avail 
hiniseli"  of  the  fame  which  years  of  sale  and  <ircat 
expenditure  of  nioney  had  acquired  for  phuntilfs 
l^re pa  ration  ;  still  there  was  clear  jH'oof  that  he  did 
not  intend  to  incur  any  penalty  for  imitation,  or 
for  attempts  to  impose  his  compound  on  the  public 
as  the  plaintiff's  article,  and  that  he  had  kept  with- 
in tiie  letter  of  the  law  if  he  were  at  liberty  to  call 
his  i)reparation  "Cherry  Pectoral."  That  the  word 
"Cherry"  described  one  of  the  ingredients  of  the 
com[)ound,  the  Avord  "Pectoral"  described  its  use 
and  application;  that  both  words  Avere  common 
proi)erty,  and  that  the  Iaat)  Avords  made  a  descriptive 
term,  to  Avhich  no  one  could  acquire  an  exclusiA'e 
use.  Judgment  granting  injunction  reversed. 
1877,  iV^.  Y.  a.  of  Co i/i.  Picas,  G.  T.,  Ayer  «. 
Rushton,  unreported.* 

See  also  AVokds  ;  and  PaivTneusiiip,  Name  of. 
V.  Fancy  name. 

§  080.  A  and  B  filed  their  bill,  alleging  a  i-ight 
to  a  trademark  in  the  Avord  "Ethioiuan"  u])on 
black  cotton  stockings,  acquired  by  A,  and  a 
former  partner,  deceased,  praying  an  injunction 
and  ;in  account  of  prohts.  Defendants  d«Miied 
plaintiffs'  right  to  tlie  mark  as  a  trademai'k.  stating 
that  other  i)ai'ties  used  the  AVord  prior  to  A  and  his 
partiuM-,  but  admitted  that  they  (^delV'ti(hint>)  had 
copied  the  mai'k  froiu  plaintiffs'  stockings,  and  de- 
nied any  fraudulent  ijitent  in  so  doing.  The  evi- 
dence as  to  plaintiffs'  right  to  the  mark  as  a  trade- 

^'  This  ciitji'  is  now  iu  the  Court  of  Appeals  for  review. 


{Fancy'] 


Najie. 


[iuuiie.] 


233 


mark  was  very  unsatisfactory  ;  but  held,  that  de- 
fendants, liavini;'  made  so  complete  a  copy  of  pLiin- 
tittV  mark,  the  dilference  being  only  nominal,  must 
be  taken  to  liave  d(me  so  with  an  intent  to  uain  an 
advant;i,u:'  to  whicli  tliey  were  not  entitk^d — iind 
that  tli(^  motion  to  dissolve  the  injunction  should 
be  denied.  184(5,  Vice  Chaiicdlor' s  C/.,  lline  /\» 
Lart,  10  Jurist,  lOG 

^  081.  The  pkuntiff  liaving  iirst  applied  the  mime 
"Pain  Killer"  to  a  medical  comi)ound  made*  and 
sold  l)y  himself,  it  was  held  that  the  npplication  of 
the  same  name  to  a  similar  compound  sold  by  de- 
sendant,  bottled  and  labeled  in  a  somewhat  similar 
Avay,  was  an  infringement  of  the  i)laintiirs  trade- 
mark. 18.")(),  Supreme  67.  of  Ithode  .Inland,  Davis 
V.  Kendall,  2  IL  J.  otKJ. 

§  082,  The  distinction  between  a  "fancy  "  name 
and  a  descriptive  name— considered.  J8."J7,  J\".  Y. 
ISupcrhr  CI.  aS'.  T.,  Fetridge  v.  Merchant,  4  Abb. 
Fr.  mo. 

J;  083.  Whether  a  mere  name  of  an  article  or  a 
designation  of  a  i)lace  of  manufacture,  can  or  can- 
not become  the  subject  of  protect  ion,  as  a  trademark, 
or  whether  the  words  ''Genuine"  or  "Yankee" 
can  or  cannot  in  any  possible  coml)i]iation  be  used 
as  a  trademai'k,  ihe  court  will  lestiain  the  use 
thereof  in  i)eculiar  devices  and  labels  in  imitation 
of  trademaiks  used  by  a  manufacturer  to  distin- 
guish his  goods  and  when  such  use  tends  to  deceive 
the  public.  IS.")?,  N.  Y.  Superior  CL,  (J.  T.,  Wil- 
liams «.  Johnson,  2  Bosa\  1.     !<ee  ^  08."). 

j^  084.  There  is  no  legal  restriction  upon  a  manu 
facturers  choice  of  a  name  i\)r  his  trademark,  an\ 
ujore  than  of  his  choice  t)f  a  syml)(>l,  so  that  hi', 
name  be  so  far  peculiar,  as  applied  to  manufacture 


234 


l^Fancy]         I^ame. 


\name.'] 


i' 


goods,  as  to  be  capable  of  distinguisliing,  when 
known  in  tli(i  niarkot,  one  nianuractiirei'''s  goods  of 
a  ceitain  description  from  those  of  another. 
"Roger  Williams,"  thongli  the  name  of  a  fainons 
j)erson,  is,  applied  to  cotton  cloth,  a  fancy  nan;e, 
and  tlie  ntime  "'Roger  Williams,  Long  Cloth,"  is 
capable  of  being  appioiniated  by  a  inannfactui-er  to- 
cotton  cloth  of  his  manufacture,  to  distinguish  it 
from  cloth  of  the  same  general  description  manu- 
factured by  others  ;  and  if,  to  the  knowledge  of  the 
public,  it  be  so  appropriated  by  the  plaintitf,  a  per- 
son who  stamps  the  name  of  ''  Roger  AVilliams  "  on 
his  cloth  of  similar  description,  with  the  design  and 
effect  of  fraudulently  passing  it  upon  the  market 
as  and  for  cloth  manufactured  by  the  plaintiff',  to 
the  lessening  of  the  gains  and  credit  as  a  manufac- 
turer of  the  latter,  is  liable  to  him  for  the  injury 
caused  thereby.  1800,  Hapreme  CI.  of  11.  /.,  Bar- 
rows i\  Knight,  G  li.  I.  4-^4. 

§  G8."5.  AVliere  the  plaintiff'  has  the  right  to  the 
exclusive  use  of  a  trademark,  in  a  particular  arti- 
cle of  manufacture,  any  labels,  devices  or  handbills 
used  by  the  defendants  which  are  calculated  to  de- 
ceive the  i)ublic  into  the  belief  that  the  article  they 
are  selling  is  the  article  made  and  sold  by  the 
plaintilf,  will  be  restrained  by  injunction,  and  the 
plaintiff'  fidly  protected.  iSo  held.,  where  it  ap- 
peared that  the  appellation  "Yankee  Soap"  was 
known  to  indicate  the  plaintiff's  soap,  and  that  the 
defendant's  labels  were  in  imitation  of  the  plain- 
titf s,  and  calculated  to  deceive.  18G8,  N.  Y.  Sti- 
2)6 r lor  Ct.^  S.  T.,  Williams  v.  Spence,  2o  How.  Pr. 
BGG. 

§  G8G.  Where  A  introduces  into  the  market  an 
article  which,  though  previously  known  to  exist, 


wl 


\Finicy\ 


Name. 


\)tamc.'\  2;].^ 


is  new  as  an  article  of  comnierco,  and  lias  acquired 
ii  reputation  therefrom  in  the  market  by  a  name 
not  merely  descriptive  of  the  article,  B  will  not  be 
permitted  to  sell  a  similar  article  under  the  same 
na.ne  ;  and  this  although  tlie  peculiarity  oi  the 
nanie  in  question  has  long  l)een  in  cojunwrn  nse  as 
applied  to  goods  of  a  dill'erent  kind,  lIcJO^  that 
where  the  plaintiffs  sold  oidy  one  quality  of  soap, 
and  that  by  the  name  of  '"The  Excelsior  White 
Soft  Soap,"  the  word  "Excelsior"  was  not  a  mark 
of  quality  or  description,  and  that  saitl  word  is  one 
in  which  an  exclusive  I'iglit  of  riser  as  a  trademark 
nray  l)e  obtained.  18  JiJ,  Viu'.  (Jh.  W(n(l' -s  67., 
Braluim  r.  Bustard,  0  L'l.o  TIhk'.^  Ii''i).  (.Y.  .s'.)  11)1); 
S.  C,  1  ][eni.  &  31.  447;  S.  C,  11  II'.  Ji\  loOl  ;  S. 
C,  2  M'W  R.  :u2. 

%  087.  Tlie  judge,  before  whom  the  action  was 
tried,  found  as  facts  that  the  plaintiffs,  in  November, 
1850,  comi)ounded  fnmi  cocoanut  oil  and  other 
ingredients,  a  mixture  to  be  nsed  as  a  hair  wash, 
for  which  they  devised  as  a  trademark  t\\Q  name  or 
word  *' (Jocoaine  ;"  that  they  published  tlu^  same 
verv  extensively,  with  notice  that  thev  had  adoi)ted 
the  said  name  or  title  as  their  ti'ademark  ;  and  that 
the  defendant,  in  Xoveml)er,  1808,  commenced  the 
preparation  and  sale  of  a  similar  ccmiponnd,  in 
bottles  and  with  labels  under  the  name  and  title  of 
"Cocoine;"  and  further,  that  the  defendants,  well 
knowing  that  the  name,  word  or  title  of  "  Cocoaine  " 
was,  and  for  a  considerable  time  had  been,  the 
trademark  of  the  plaintiff's,  ^vith  the  Avrongful 
intent  of  inducing  the  public  to  believe  that  the 
compound  sold  by  themselves  under  the  name,  word 
or  title  of  '"  Cocoine,"  was  that  of  the  plaintiffs, 
and  with   the  wrongful  intention  of  securing  to 


If 


23G 


[Fane?/]         Name. 


[name.] 


themselves  the  benefit  of  the  skill,  labor  and  ex- 
pense oi*  the  plaintiifs,  luive  so  closely  iniirated  and 
used  the  aforesaid  trademark  of  the  plaintilfs  as  to 
deceive  the  pnblic,  and  to  injure  and  damage  the 
plaintilfs ;  that  the  word,  name,  title  or  device 
"Cocoine"  is  a  spurious  and  nnltiwfnl  imitation 
by  the  defendants  of  the  word,  name,  title  or  device 
'' Cocoaine,*'  the  aforesaid  trademnrk  of  the  plain- 
tilfs. //  was  hdd  that  the  plaintilfs  were  entitled 
to  a  jnd^'inent  enjoinini^"  the  defendants  from  uianu- 
lacturing,  using,  selling  or  in  any  uianner  disposing 
of  a  (!()mponnd  or  preparation  with  the  name,  word 
or  title  of  "Cocoine"  printed  or  stamped  upon  the 
bottles,  labels,  wrappers,  covers  or  packages  there- 
of. 18G7,  N.  Y.  Court  of  Ap/wuls,  Burnett  «. 
Phalon,  ;j  Trans.  App.  1G7 ;  S.  C,  3  Kvijes,  ,594; 
S.  C,  5  Abb.  Pr.  {N.  8.)  212;  S.  C,  1  Abb.  Vt.  of 
App.  Ih'c.  207;  alfi'g  S.  C,  9  Bosm.  193;  afli'g  S. 
C,  12  Mo.  Law  R.  220. 

§088.  The  title  and  trademark  of  the  plaintilfs 
article  was  "Perry  Davis'  Vegetable  Pain  Killer," 
and  had  been  introduced  in  the  market  under  that 
name  as  far  back  as  18-42.  About  live  yeai's  ago  the 
defendant  commenced  tt)  manufacture  and  sell  an 
article  sinnlar  to  the  plaintiff's,  which  he  called 
"The  Great  Iloine  Kemedy,  Kennedy's  Pain 
Killer."  Plaintilf  filed  a  bill  to  restrain  the  use 
of  the  words  "Pain  Killer"  by  defendant.  There 
was  an  obvious  dilfereiice  in  the  appearance  of  the 
labels  and  bottles  when  seen  together.  Defeudant 
contended  that  his  label  Avas  not  an  iid'ringenient  of 
the  plaintilfs,  and  that,  as  the  words  J\iin  Killer 
was  descriptive  of  the  article,  that  x>hdntilf  had  no 
exclusive  right  thereto.  The  evidence  showed  that 
the  name  Pain  Killer  was  lirst  invented  by  Perry 


[Fancy'] 


Namk. 


\_na)H('.'\ 


237 


Davis,  that  siucp  1S41  it  was  iiiidoistood  by  \\\i' 
public  and  tlie  trade  that  IViiy  Davis  was  (ho  in- 
veiitoi'  (>r  "Pain  Kilh'iv'  that  "Pain  Killer" 
meant  tlKMiiediciiie  of  th<3  ])]aiMti(t',  that  whenever 
"  Pain  Killer"  was  asked  foi',  the  i»laintin"s  medi- 
cine was  understood  as  meant,  and  sni)[)lied  wilhont 
I'lii'tlKM'  inqiiii y.  that  his  medicine  was  asked  J'or 
and  supplied  without  further  designation,  that  the 
defendant's  arti(^le  coidd  not  he  sold  in  considei'a- 
able  quantities  unless  the  name  Pain  Killer  was 
conspicuously  jtlaced  thei"eon,  and  thai  it  was  oidy 
since  the  defendant's  article  had  been  introduced 
that  persons  who  asked  I'or  "Pain  Killer"  <;ave  th(^ 
name  of  the  maker.  There  was  pi-oof  that  defend 
ant's  article  was  obscurely  known  in  the  ti'ade,  ))Ut 
that  plaintilfs  article  had  i)i'eviously  obtained  a 
great  reputation.  Jlt-hi,  that  tlie  words  "l*ain 
Killer"  fell  within  the  class  of  trademarks  usually 
calleil  fancy  nami^s  or  trademarks,  which  are  arbi- 
trarily selected  by  an  Inventor  or  manufactui-er  to 
catch  th(^  eye  or  ear  of  the  public,  and  to  distin- 
guish his  article  from  others  of  the  like  nature. 
Tiiat  it  was  ti'ue  tliat  the  term  Pain  Killer  was  sug- 
gestive of  the  use  of  the  medicine,  but  that  it  was 
not  an  adjective  or  used  adjectively  ;  that  it  was  a 
quaint  combinatitm  of  words  n(3ver  probably  nsed 
together  before,  forming  a  mime  bv  which  the  in- 
ventor  desired  liis  medicine  to  be  known,  and  cdcu- 
hited,  as  lie  liglitly  judged,  from  its  quaintness  to 
lix  itself  in  the  memory  of  the  general  public. 
Hdd,  further,  that  the  words  "Pain  Killer"  was 
the  distinctive  trademark  of  i^laintilf,  and  that 
even  taking  the  whole  title  "Perry  Davis'  ^'egeta- 
ble  Pain  Killer"  to  be  the  trademark,  the  use  of 
the  words  "Pain   Killer"  \\])o\\  the  defendant's 


m 


!   i:W 


'■'t 

-,•1'  ■ 

1 

'■]     ■ 

ll 

■^'iu 


IMAGE  EVALUATION 
TEST  TARGET  (MT-3) 


1 


// 


'4^ 


1.0 


1.1 


l^|2£    12.5 
■^   Uii    12.2 

2.0 


Ui 


1 

I 


^ 


||L25  ||l.4   ,,.6 

^ 

6"     

► 

^. 


f 


7, 


/. 


'/ 


/A 


Photografdiic 

Sciences 

Corporation 


33  WIST  MAIN  STRUT 

V^nSTH.N.Y.  14SM 

(716)I72-4S03 


U.i 


238 


[Fancy]         Name. 


[na/ur.] 


V  '!• 


■.\»i 


label  IIS  nfoiosaid  was  an  iiifi'ingcmont  of  the  plaiii- 
tilfs  tnulciinark.  Dofcndant  was  enjoiiuHl  JVom 
tlie  use  (if  said  words,  ordei'ed  fo  account  for  the 
profits  lie  had  made,  and  to  forthwitli  destroy  all 
dies,  labels,  wi-appers,  and  printed  jtajieis  in  liis 
possession,  power  oi'  control,  ni>on  which  tlie  plain- 
tilfs  said  tradeinai'k  was  used.  ]8()T,  Se[tt.  :>, 
Vice  (Jhdmrllofs  Ct.  held  <d  ir(tiiiiUo)i,  Ccnodd, 
May^  1807,  Davis  i\  K(Min<'dv,  uni'eport<'d. 

^"080.  In  the  yeai'  is:)i),  the  plaintiif,  Carl  A.  11. 
8c  V  "t/xu",  who  cari'ied  on  the  business  of  an  ana- 
'"tic;:1  'iiomist,  invented  a  ]»rei)aration  of  C(tcoa  to 
,v!Mci(  1 '»  "T-plicd  th(3  fancy  name  of  "■  cocoatina "" 
\\\iy\  V  la  sold  in  packets  hdxded  "Schweitzer's 

(•ocaa;ii  1,  oi- anti-dyspeptic  cocoa,  rejiistered,"  It 
had  evei' since  been  known  under  that  name  and  had 
now  attained  an  extensive  sale.  The  defendant  At- 
kins had  been  in  the  employ  of  the  ])laiiuilf,  to 
v.-hose  wif(^  h(^  was  related,  and  upon  leaviiii;  the 
plaintiirs  establishment,  in  Febrnary  18(58,  he  had 
i-eceived  money  from  theplaintilf  for  the  i)urpose  of 
enablin.L;'  him  (the  defendant)  to  set  up  Imsiiiess  <m 
his  own  account.  The  defendant  thereupon  entered 
into  partnei'ship  with  a  man  named  Otto  Schweitzer 
and  ti-aded  under  the  name  of  "Otto  Schweitzer, 
Atkins  iSL'  (jo."  Shortly  afterwards,  the  defendant 
and  his  partner  (who  was  now  a])road)be,<;'an  selling 
another  pi'epai-ation  of  cocoa,  which  they  called 
"  cocoatine,"  and  sold  in  packets  labeletl  "Otto 
Schweitzer,  Atkins  k  Co.'s  cocoatine,  registered." 
Tlie  packets  and  labels  of  the  two  lirms  had  a  general 
resemblance  in  color  and  form,  though  the  defend- 
ants' packets,  at  the  same  price  as  the  plaintilfs.were 
considerably  larger  in  size.  The  defendants'  label 
contained  si  description  below  the  title,  which  the 


I ;  ta 


iV 


lif 


[Fancf/] 


Xame. 


[inf. ■///'.] 


'2:Vo 


plaintilT's  had  not,  but  in  small  print.  The  direc- 
tions for  use  were  quite  difVeieiit.  //c/r/,  ilmt  tliei-e 
had  been  a  fraudulrMit  and  coloiable  iniitatinn  on 
the  part  of  the  del'endauts,  and  an  injunction  was 
granted  accord! nuly.  18()S,  IhJ'ore  M<(I!us^  V.  ('., 
Schweitzer  >\  Atkins,  :>7  J.rnr  Jour.  J*.  {X.  S.)  c/i. 
847  ;  S.  C,  10  L(nr  7V///r.v  JL  ( X.  S.)  C. 

§  CiDO.  Any  contrivance,  desigji,  device,  nanu% 
symbol,  or  other  tliini;',  may  be  empl(»yed  as  a 
trademark,  ^vhich  is  adopted  to  point  oiit  the  true 
source  and  ori.uin  of  the  ,iroods  to  which  said  maik 
is  a])i)lied,  or  even  to  point  out  .and  desl^nat<'  a 
dealer's  ])lace  of  busin<'ss,  distinuuishin^-  it  IVom 
the  business  locality  of  other  dealers.  The  mai'k, 
however,  must  point  out  llu;  source  and  origin  of 
the  goods,  and  not  be  merely  descriptive  of  the 
style,  cpiality,  or  character  of  the  goods  them- 
selves. The  ])laintilf  originated  and  applied  to 
cooking  stoves  of  his  manufacture,  (lie  name 
"Charter  Oak,"  whicli  was  so  formed  upon  the 
patterns,  as  to  lU'oduce  the  name  u[)on  the  stoves 
in  combination  witii  a  s[)iig  of  oak  lea\(»s.  This 
name  and  device  was  employed  to  distinguish  and 
designate  tlie  plaintiirs  ai'ticles.  //r/r/,  that  said 
name  and  dinice  were  i)ossessed  of  the  recpiisite 
chai-acteristics  of  a  trtulemark,  and  that  as  said 
stoV(?s  were  not  generally  known  by  tlu>  i)articular 
device  wliich  surroundetl  the  name  upon  them,  but 
by  the  name  itself,  the  use  of  the  name  "Charter 
Oak,"  separated  fiom  other  parts  of  the  trademark, 
amounts  to  an  infringement  of  the  maker's  rights. 
18(59,  Supreme  Ct.  of  Missouri,  Filley  i\  Fassett, 
4-i  Missouri,  1G8. 

§  001.  The  plaintiff,  being  a  shirt-maker  in  Lon- 
don, invented  a  particular  form  of  shirt,  to  which 


^^.i 


■III 


^|i 


n^ki 


ii 


m 


^^ 


I- 


hi  ■  li' 


I 

■h 


im 


240 


\_Fancy']  Nami:. 


\iiame.'] 


he  gave  the  nnme  of  "Eurokn,"  mid  used,  as  a 
trademark,  whicli  lie  affixed  to  the  shiils,  the 
words  "'Ford's  Eureka  Sliirt."  After  tlie  i>liiintilf 
had  used  this  trademark  for  several  yeais,  tlie 
deH'iidaiits  eomnu'iiced  to  use  the  word  "'Eureka," 
affixinii'  it  to  a  shirt  in  exactly  the  same  ])hu«'as 
the  plaintiff  allixed  his  mark,  also  boxes  eontainin*,' 
small  quantities  of  shirts,  just  as  much  as  one  i)ur- 
chaser  would  buy,  with  the  mai'k  "Foster,  Porter 
k  Com])any's  Iin])i'()ved  Eureka."  The  defendants 
Avei-e  restrained  hy  injunetion  from  affixing  or  using 
any  label  or  card,  or  other  mark  containing  the  word 
"Eureka,"  or  from  applying  the  word  "Eureka," 
to  or  upon  any  shirts  not  of  the  plaintiff's  manufac- 
ture. 1872,  (Hi.  Ct.  of  Apx)i'al^  Ford  «.  Foster,  7>rt?/) 
11.  7  CMncery  jVp.  Ca.^.  Gil  ;  S.  C,  27  L.  T.  It. 
{N.  S.)  219  ;  S.  C,  41  L.  J.  li.  {N.  S.)  Ck.  CS2  ; 
S.  C,  20  W.  11.  .'5 18  ;  reversing  S.  C,  20  IF.  IL  WW. 

>?  002.  The  exclusive  right  to  the  use  of  a  fancy 
name  as  a  trademark,  is  not  lost  by  the  inventor 
lia])itual]y  using  it  in  conjunction  with  his  own 
name  as  maker  of  the  article.     Ihld. 

i  go:],  a  fancy  name  which  designates  a  partic- 
ular kind  of  article,  may  be  in  general  use  in  price 
lists  which  circulate  between  manufacturers  and 
retail  dealers,  without  prejudicing  the  light  of  the 
inventor  to  the  exclusive  use  of  a  fancy  name  as  a 
trademark  in  the  sale  of  the  article  to  the  X)ublic. 
Ihid. 

i  G04.  For  twenty  years  the  plaintiffs  used  tlie 
trademark  in  question,  by  stamping  or  labeling  it 
upon  shirts,  their  packages  and  advertisements. 
In  March,  1871,  they  registered  their  trademark  in 
tlie  patent  oflice,  under  the  act  of  Congress  (IG  ^. 
^.  Slat,  at  L.  210,  &c.  §  77,  &c.).     The  trademark, 


jj' 


\F<'l)rU^ 


Xamk. 


ynoiiii'.'] 


241 


m 

^ 

'  7-11  < 

:.fi,.'i 


;is  nj^pcniiMl  1»y  tlio  ccrlilicMft'  <»f  tlic  rnmniissiiouM" 
of  jiMtciits.  consists  of  tlic  words.  "Tlic  St.-ir 
Sliirf;""  also  llic  woids,  '-'I'Ik'  Star  Sliii-t."  witli 
the  (Icvicf  of  a  si\'-j»oi!i!('(l  stai'  tlicrcwilli  :  also 
tlic  device  and  words.  *•  The  j|t  Shiil  ""  eiiln-r  one 
())•  all  liei'iL!,"  used  as  convenience  i-eipiires,  *•  'I'lioimh 
this  device  (»i'  mark  is  in  pail  arl)itrary  and,  io  lliat 
extent,  W(»ul(l  have  no  natni'al  or  necessary  sin,- 
nilicance  in  connection  with  (he  ailicle  nianufac- 
tuicd,  apart  IVoin  its  nse  in  that  connection,  yet. 
hy  such  use  of  the  jilaintilVs.  in  coinu'ction  with 
t  heir  inannlactare  and  sale  of  tliese  article-^,  ii  has 
heconio  well  known  to  the  tra(h',  and  has  come  to 
)>e  taken  hv  dealei's  as  a  iiecnliai'  desiuiialion  l>v 
which  llie  plaintilV's  u'oods  are  distinguished  in  the 
market.  It  is,  therel'ore,  both  in  its  chaiacler  and 
nse,  when  t:d\en  to/j^vthcr,  a  lawl'nl  tradt'inaiU.  it 
has  hm<^  been  employed  l)y  the  ]»laintilfs.  and  well 
nnd<Mstood  by  d(\de;s  an<i  the  pnblic  as  desiiiiialinu' 
sneh  aitich^s  of  their  mannlactni-e.  The  ])laintiil's 
are  entitled  to  ])i'otection.  Their  exclnsive  ri^zht  to 
the  ns(}  of  this  ti'ademaik  is  co-extensivt^  wit  li  the 
limits  of  the  United  States."  187-i,  /'.  S.  circuit 
iJt.,  Con)).,  .Nfoi-rison  r.  Case,  !)  nhilrlif.  C  < '.  r)48. 
§  CO.").  A  mannractniei  who  has  jo-odm-ed  an  ar- 
ticle of  merchandise  (c.  (/.,  a  new  ])allern  of  cloth). 
and  a])plied  to  it  a  particnlar  fam-y  nani<\  and  sold 
it  Avltli  a  p.ariicnlar  mai'k,  nnder  wliich  name  and 
mark  it  Iids  obtained  cnirencv  in  tlie  maiket.  ac- 
(pilies  an  exclnsive  riuht  tolhens*'  of  snch  name 
and  mark,  and  is  entitled  to  restrain  all  othei'  ]>er- 
sons  fi'oni  using  such  name  and  mai'k  to  denote  ar- 
ticles similar  in  kind  and  ajipciiram-e.  althonuli  he 
may  have  no  exclnsive  light  of  manufa<'tnring  the 
article.  If  the  use  of  sucli  name  and  mark  by  any 
10 


'f! 


fW 

l!    f: 


I; 

■I- 


'^1 


242  [i^«7i(??/]         Xame. 


[name.] 


other  person  tlian  tlie  first  inventor,  has  been 
adopted  for  the  purpose  of  sellinii;  p:()ods  of  an  infe- 
lior  quality,  thoufi'h  of  similar  external  ai)]>eaiaiu'e, 
so  that  pui'cluiscrs  may  be  misled  into  the  bt'lief 
that  they  ai'e  buyinu'  the  <;-oods  of  the  lirst  invciitoi', 
tlie  injury  to  the  lirst  inventor  is  one  for  which  he 
is  entith^d  to  comptMisation  in  damages  and  relief 
by  injuneticm.  1872,  Vice  67/.  liacort  .s  CY,,  Hirst 
i\  Deidiam,  L.  R.  14  Eq.  r)42 ;  S.  C,  41  Laip 
J(nn\  R.  {N.  .S'.)  C/uuic.  i:)2\  8.  C,  27  Lam  Times 

>j  (500.  The  i)laintiff,  a  woolen  manufacturer,  in- 
troduced into  the  market  cloths  of  particular  tex- 
tures, made  by  him,  under  arbitrary  names,  as 
"Turin,"  "Sefton,"  "Leopold,"  and  "  Livei-- 
pool."  The  defendant  copied  the  patterns,  which 
W'cre  not  re^'istei'ed,  and  sold,  the  cloths  under  the 
same  names.  The  defendants  alsr)  used  a  ticket  in 
sendiim"  theii-  cloth  to  the  wholesale  dealers,  closelv 

'T77  » 

resembling  that  of  the  plaintiif  ;  but  they  explained 
that  they  purchased  the  ticket,  which  was  of  a 
simple  description,  and  did  not  bear  the  mannfactu- 
lers'  nanie,  from  the  stock  of  a  tationer,  without 
any  intention  to  copy  the  i)laintu.'s.  They  claimed 
to  be  entitled  to  desci'ibe  the  cloths  by  the  names 
given  to  them  by  the  plaintiff.  IMil^  that  the 
phtiiitilf  was  solely  entitled  to  the  names  as  trade- 
m.'irks  ;  and  that  the  use  of  the  tickets,  even  if  inno- 
cent, was  unjustifiable.     Ibid. 

%  G97.  The  device  consisting  of  tlie  word  "  Star" 
stamped  upon  lead  pencils,  held  to  be  a  valid  trade- 
mark. 1875,  N.  Y.  Supreme  CL  Q.  71,  Fird  Depf. 
Dec.  30,  Faber  n.  Ilovey,  unreported. 

§  698.  The  plaintilf  adopted  as  a  trademark  for 
his  stove  iiolisli  a  device  of  an  orb,  with  rays  of 


..  f  ^' 


■  f^ 


[f,'rof//-(/p7,  }ciiT\        Xa  m  k. 


/Kf/Ur.] 


HA'.) 


Wisht  lisino-  over  ;i  l)()(ly  of  wnfcr,  in  ('omiccricn 
with  tlic  words,  ''Ri.^h}}/  S/tfi  Store  Pol/,<ikr  1Mh^ 
(IcfoiKliint  .siil)S(Miiiently  used  ms  liis  trndf^iiJirk  for 
ills  st(>v(»  polisli  :i  siiiiilni"  (l(>vi('(»  (  '"  :in  orb  lisiim^ 
over  ;i  l)()(ly  of  w.-iloi-,  in  coniK'clioii  \\itli  llic  woids 
'-  RIsiii;/  .^fonn  S! ore  Polls]/."  'I'lic  plMintJif  lilid 
n  bill.  Mild  fli<>  defcndMiif  by  liis  answer  jidmitN-d 
iibove  I'Mcts,  Imt  dt^nicd  :niy  int<Mitioii!d  imiliilinn. 
()!•  tiiMt  tli(M'(»  was  a  siidicicnf  rcsfMiiblancc  fo  caii^^f 
de('t'[)tion.  Hih},  l)y  tlio  coui'r.  tliat  dfrciidaiil's 
trademark  was  a  ])lai)i  imitation  of  llie  ])laintil1"^. 
and  tliat  tlic  defendant  slionld  be  restrained  by 
injnnetion  from  the  nse  of  liis  said  (h'vice  ;  fidiu 
iisinii;  tlie  name  "Kisinii*  Moon  ;"'  also  fioni  iisinLi' 
tlie  device  of  an  orb  rising  over  a  body  ol'  waler. 
1875,  Pli'iln.  Cniirf  of  Com.  Pleas,  Mor'so  r.  Corn- 
well,  unreported. 
See  also  t>;>  44,  :57n,  370,  SO."),  431,  433,  871. 


M 


if:  ! 
*.  •  '■ 


YI.  Gcoriraphical  name. 

§  HOT).  Thon,L!;h  no  exclnsive  I'i^-ht  of  property  can 
bo  aeqnired  in  the  pnblio  and  well  known  name  of 
a  p,'e()^'i'aplii('al  distri<'t,  siieh  a  ri.uht  may  lie  ae- 
(piired  in  tlie  ai)pli('ation  of  such  a  name  to  a 
particular  artich.^  of  manufacture,  if  the  ai-tlcle  has 
acquired  a  rei)utation  in  the  market  under  sinh 
name  as  a  trademark,  1804,  lief  ore  Lord  ('//. 
Wes(l)urf/  on.  Appeal,  ^T Andrew  v.  ]3asselt,  li» 
Jiiri.sf  (n.  S.)  TmO  ;  S.  C,  33  Laic  J.  R.  {X.  >'. . 
Cli.  .001  ;  S.  C,  12  ^Vee^dl|  R.  777;  S.  C  10  Isinc 
T.  R.  {K.  S.)  442;  allirinin.ii:  S.  CL,  1(>  Jifris'l  (X 
S.)  402  :  S.  C,  10  La  10  T.  R.  {K.  S.)  0."). 

§  700,  The  plaintiffs  were  manufacturers  of  li(|uor- 
ice,  and  having  made  in  England  a  new  description 


i 


m . 


m 

'• .  '.'1.1 

Si! 

it 


,'J     >«" 


II.  i' 


»1; 


211    {Ccoriraphica^    Xame. 


\imme.'\ 


of  n'oods  IVom  a  niixtun^  of  jiiire  exfrMctf^l  from 
inols  (>i)t;iined  from  Aiiiif(<li:i  and  S[!aiii,  liu'V 
stamped  U]»oii  tlu?  m;uiur:u'riin'd  article  the  mark 
"•  Anatolia."  and  sold  it  to  llie  i)n1)li('  and  acciiured 
a  re])iitation  for  it  in  tlu^  maiket.  Alxmt  six  weeks 
afleiwaids  some  of  the  uoods  so  mai'ked  were  sent 
lo  the  defendant  with  a  retjnest  that  lie  wonld  mak;' 
n])  li(|nori('e  in  the  same  foi-m  and  Avith  the  same 
."-lanii).  ]ii(inoi*i('e  juiee  had  long  been  imjioi'ted 
from  Anatolia,  Imt  no  one  liefore  the  i)laintiir  had 
i!-ed  the  word  ''Anatolia"  as  a  mark.  JliUl,  by 
Nice  (Ml.  Wood,  and  allirmed  on  a])peal,  that  \\\\' 
wold  "Anatolia"  miuht  ho  used  as  a  trademark, 
and  that  the  i)laintilf  had  accinii'ed  suflicient  prop- 
erly in  it  to  entitle  him  to  an  injunction  against  the 
d^'I'^'iidant.     Ibid. 

i  Ti>7.  Ever  since  the  year  18-18  the  plaintiff, 
f'.iroii  Seixo,  had  caused  his  casks  to  be  stamped 
v.iili  his  coionet  on  the  top,  . and  with,  his  coronet 
and  the  word  ""Seixo"  at  the  bnng ;  and  the  evi- 
denc','  showed  that  his  wines  had  thus  acrpiired  in 
tlie  market  the  name  of  "Crown  Seixo  Wine." 
^^'hen  therefoi'e  the  defendants,  in  the  year  I80O. 
a(h)pt(.>d  as  their  device  !i  coi-onet  with  the  v.'ords 
'•Seixo  de  Cima"  (meaning  Upper  Seixo),  below  it. 
the  consequence  was  almost  inevei table  that  persons 
Avith  only  the  oidinary  knoAvledge  <.)f  the  usages  of 
Avine  trade  from  O]»orto  would  sup])ose,  that  i)i 
])iirchasi!ig  a  cask  of  wine  so  marked,  they  wt've 
l>urchasing  what  Avas  generally  known  in  tin?  mar- 
ket as  "Crown  Seixo"  Aviiie.  Against  the  use  of 
^uch  a  liademark  the  plaintilf  has  a  light  to  htiA'e 
an  injnnciion.  Even  assuming  the  truth  of  Avhat 
the  tlefeiuhmts  contend  for,  /.  <'.,  that  parts  of  their 
Ainevards  were  known  bv  the  name  of  Seixo,  that 


[Geoyraph  tea  ?]       X  a  m  f. 


{naiite.'] 


t?in 


does  not  justify  tlioiii  in  iidoptiiii,'  a  (Icvicc  or  hraiil. 
the  i^rohal)!*;  ellV't-t  of  wliicli  is  to  lead  tin^  i)iiltiic. 
wlien  purcluisinii;  their  wine,  to  sui>[)os('  ihat  llicy 
are  piirchasini^  wiu(!  fi'oiu  the  vineyards,  iio(  of  ili.' 
defendants,  but  of  the  i)laiiitiir.  Tlie  defeiidaiiis 
were  enjoined  from  nsin,^;-  the  ei'own  oi-  th<'  \\(.id 


Sc 


eixo"  on  their  Avini?.  i^There  was  no  e\i(h'nee  [> 
show  that  the  (h?feiidants  evei-  oll'<M'ed  iheir  wine  as 
"('lown  Seixo,"  but  it  was  i>i'oved  that  tliey  Imd 
oll'ei'ed  it  as  ''Ci'own  Seixo  de  Cinia  ; "'  and  a  wine 
broiver  of  eiuineiK.-ti  de[»osed  that  he  bt'!ie\<  il  ir. 
wlien  oU'ered  by  tliat  name,  to  be  the  iijainliir  ■> 
wine.)      Ji^()(5,  Bcf'ori'  Lord  (' h.  ('rmi ii^ari/i   on  Aji- 


l 


>('(i 


/.  Seix 


xo  r. 


Pi 


ovezen<h>,  /..  Ji.  1  C/i.  ID-J  :  S.  ( 


Vl  .hnist   {N.  K)  21,');    S.   (J.,  14  UVr////  /A  :j:)7  ; 
S.  C,  \A  L((w  T.  J?.  {lY.  S.)  :]\4. 

jj  708.  AVhere  ])lows  in  lefeienee  to  Mliicli  ll:e 
words  '•  Moline  IMow  "'  wei'e  used  (bejuM-  tiKiiiu- 
factured  in  the  town  of  ]\Iolint>,  lll.i,  said  words 
wer(^  le.uarded  as  a  ^'(Mieric  tei'm,  and  as  indic.-il inu- 
tile place  at  wliicli  they  wei(3  mach',  and  ii  \vas  /,</'/ 
tliat  no  i)i'oi)erty  could  be  acipiin^d  in  words  id' 
that  chai"i(;ter,  as  constituting-  a  ti'ademnrk,  to  t!i" 
exclusion  of  others  in  their  use  in  connection  wiili 


plows  made  l)y  them  at  the  same  i>lace.  1ST'». 
•^"/'re//i(i  CL  of  llliiioh^  Candee  c.  Deere,  .Vt  ///. 
4:v.). 

,^  709.  One  manufacturer  of  an  article  at  a  len- 
ticular town,  whose  wares  Inive  gaiiu'd  celeluiiy, 
can  not  appropriate  as  Jus  own,  to  the  ex(dusinu 
of  other  persons  in  the  same  place,  the  name  <d' 
the  place,  and  thus  prevent  them  i'roai  desiuiiar- 
in^•  their  manufa(!tures  as  of  the  i)lace  wliere  they 
were  actually  made.  So  where  a  manufacturer  <.f 
plows  at  the  town  of  Moline,  had  been  accusioui". ' 


\'-\\ 


it'l 


s'  t. 


M\ 


\    fi 


rf 


24(5    [Gcofjraph'iL'al]    Namk. 


{^nam.e.'] 


If,  A 


■I  ;:• 


to  bi'iiiid  or  striicil  iipoii.  Ilic  bcjinis  of  liis  i)lows. 
iiiiilci-  his  iiniin',  the  words  "Molinc,  111,,'"  jiikI 
siibsn^iit'iitly  aiiothci'  niamiracfiiivi'  of  plows  in  tlie 
same  [dace,  bi'andcd  i)lo\vs  wliicli  he  luaniifacfurcd 
llH'i't',  imdcr  his  own  name,  with  the  same  words. 
••  Moline,  III.,"'  it:  was  held  thei'e  was  no  violation 
of  any  l'il^•h^  in  the  fornier,  ))ecanse  he  could 
no!  acipiife  any  property  in  thos(^  words,  wliieli 
only  indi<'ate(l  tlie  place  at  which  the  plows  were 
madt'.      /hid. 

i  71(».  AVIiere  a  plac(!  has  become  noted  by  rea- 
son of  the  excellence  of  an  articli;  manufac'tnied 
there,  another  person  may  choose  such  i)lace  for 
th<^  manufacture  of  the  same  article,  for  the  ivason 
the  name  has  become  known  in  tlie  markets,  and 
Avitli  the  intention  of  intn^lucin.u'  that  name  as  u 
part  of  the  description  of  liimself  and  his  go(»ds. 

i  711.  Ft  is  obvions  that  the  same  ivasons  which 
forl)id  the  exclusive  ai>proi»riation  of  li'eneric  names 
ov  of  thosei  merely  descrii)tive  of  tlie  article  mann- 
factui-ed,  and  which  can  be  em[)loyed  with  truth. 
a]>[)ly  with  «'ipial  force  to  the  appropriation  of 
•^•eographical  names,  designatin.n'  districts  of  conn- 
try.  Theii' nature  is  such  that  they  cannot  point  to 
the  origin  (perscmal  origin)  or  ownership  of  the  ar- 
ticles of  trade  to  which  they  may  be  applied.  They 
l)oint  only  at  the  place  of  x^i'<><^l'i<*fi<'ii5  ii(>t  t(»  the 
l)roducer,  and  could  they  be  appropriated  exclu- 
sively, the  a[)proprhition  would  J'esnlt  in  mischie- 
vous nuniopolies.  Conld  such  i)hrases  as  "  i^Mlll- 
sylvaniii  wheat,''  "  Kentucky  hemp,"  A'ii-ginia 
toluu'co,"  or  ''Sea  Island  cotton,"  be  protected  as 
trademarks  ;  conld  any  one  prevent  all  others  from 
using  them,  or  from  selling  articles  produced  in  the 


1 


[GiO'jraph  ical]       X  a  m  k, 


[name.] 


247 


(iisfiicts  they  dt'sciibe  mider  those  ap]>('ll;iti()iis,  it 
would  i;r»';illy  cnihiiri'ass  ti'iuh'.  and  secure  cxchisive 
lights  to  indiviiluals  in  that  wJiich  is  the  eouiuioii 
l)rope!-ty  of  many.  It  can  he  permitted  oidy  when 
tlie  reasons  tliat  lie  at  tlie  I'oundaticjn  of  the  i)i'ote('- 
tion  ^iven  to  trademai'ks  are  entirely  overlooked. 
1H7I,  L\  N.  S//j)/-('///('  cy.,  Delaware  and  Hudson 
Canal  Company  r.  Claik,  \'.]  \V<ill.  \\\i. 

%  7J'J.  It  must  then  he  consi<lered  as  sound  doc- 
trine that  no  one  can  ap[)ly  the  name  of  a  district 
of  country  to  a  welhknown  article  of  commei<'e.  and 
ol)tain  thei'el)y  such  an  exclusive  riirht  to  the  a]>pel- 
lation  as  to  prevent  otli«'rs  inliahitiniz;  the  district 
or  dealin.ii;  in  sindlar  ai'ticles  coininsi;  Ironi  the  dis- 
trict from  tnithfullv  iisini;"  tlie  same  desiuiiation. 
It  is  oidy  wlien  tlie  adoption  or  imitation  of  what 
is  claimed  to  be  a  trachMiiark  amounts  to  a  false  re[' 
resentatioii,  «'xpress  or  implied,  desi.uiH'd  oi'  inci- 
dental, that  there  is  anv  title  to  relief  against  it. 
True  it  may  be  tliat  the  use,  by  a  seccmd  proibicer, 
in  describing  truthfully  his  product,  of  a  name  or  a 
coml)inati(m  of  words  alivady  in  use  by  another, 
may  have  the  eflfect  of  causing  the  public  to  mistake 
as  to  the  oiigiu  or  ownershi[)  of  the  i)roduct,  but  if 
it  is  just  as  true  in  its  ai)i)Iication  to  his  gtxxls  ;is  it 
is  to  those  of  another  who  hrst  ai)plied  it,  and  who 
therefore  claims  an  exclusive  right  to  use  it,  there 
is  no  legal  or  moral  wrcjng  done.  Purchasers  may 
be  mistaken,  but  thev  are  not  deceived  bv  false 
representati(ms,  and  (M[uity  will  not  enj(»in  against 
telling  the  truth.     I  hid. 

i)  7i;}.  Where  C(jal  of  one  person  who  early  and 
long  unued  coal  in  a  valley  of  IViuisylvania  known 
as  the  Lackawanna  valley  had  been  designated  and 
become  known  as  "Lackawanna  coal,"  ILld^  that 


^^1 


li 


If 

1; 


»■■■> 


J' 


5  •' 


\i 


l       lir 


I: 


•f'i 


248    \a<offiaphimrj     NAAfi:. 


yn  l.:(r. 


iiiiiuMs  wlio  cjiriic  in  ji('t«M'wai(is  jiiid  iiiiiicd  in  ..n- 
otlicr  |>:irr  ol'  tli*-  sjiine  vnllcy,  and  ])('rs(»ns  wlui  sold 
flic  conl  so  mined,  could  not  be  enjoined  nuMJnsr  cjdl- 
inu'  iIk.mt  coal  ••  l^a<'ka\vanna  coal,"  it  heinu-  in  fact 
and  in  its  ^-eneric  character  i)i'o[)erly  so  desiuiiaied, 
alllionu'li  nioi't!  ])roperly  described  when  specilically 
spoken  ol'  as  '"Scranton  coal"  or  "I'ittston  coal,"' 
and  when  si-ecilictilly  spoken  oL'  usually  so  called. 
J  hill. 

^  714.  A  name  mav  become  a  trade  denomination 
and  as  such  the  pi'Oi)erty  of  a  particiilai'  person 
who  lirst  <j;ives  it  to  a  particidar  ai'ticle  of  manurac- 
ture.  The  emitlovment  oL'  the  name  bv  another 
person,  is  an  invasion  ol'  the  liuht  ol'  the  oriuinal 
nianuracturer,  who  is  (Mititled  to  protection  ])y 
injuiu'tion.  In  1847,  \V  bought  certain  ])lant  and 
stock  in  trade  used  in  the  manul'actnre  ol'  stai-ch, 
with  the  liiiht  to  use  the  name  "(fleulitdd  Patent 
Double  Kelined  Powder  Jstarch"  I'rom  certain  dveis 
in  (Tlenlield,  which  was  a  small  ])roperty  two  miles 
I'l'oni  Paisley.  W  since  then  continn<'d  to  make 
the  article  (^which  accpiiied  a  <;'reat  I'ejjUtation  under 
the  title  ol* ''({lenlield  Starch")  at  Paisley,  to  which 
place  he  removed  the  business,  still  usin-j,-  water, 
which  was  hirgely  employed  in  the  nianuracture, 
I'loni  (xleulield.  In  1808,  b,  who  had  lived  at  (tlen- 
lield I'or  more  than  twentv  years,  beuan  nianurac- 
tnriuii;  starch  in  a  shed  or  out-bnildiui!:  of  the 
works  ol'  AV's  assignor  at  (xlenlield,  and  sold  the 
starch  in  packets  labeiod  (J  k  Co.  tStarch  and  Corn 
Flour  Manufacturers,  (llenlield,  his  name  and  that 
of  the  place  beinii;  in  large  capitals.  In  color,  C's 
labels  resembled  those  of  W's,  but  it  appealed  that 
this  color  was  used  by  most  starch  manui'actuiers. 
There  was  evidence  that  C's  agent  represented  his 


[tlnKjraphical]       N  a  y\  v.. 


hiliiit . 


lm;» 


starch  as  •' <il<Mjfit'I(l  Starch"  and  lliat  In'  tlnivhy 
uot  an  increased  sale  for  ilie  ai'licle.  It  \v:is  proved, 
liouever.  also,  lliat  as  icLiards  the  lirsl  imreliasers, 
tlie  retail  <lealers,  there  was  nn  dfC(']>ti(>n  ;  lliat 
tliev  \v"ll  knew  lliat  in  JHiyiiiLi'  ('"s  si;nv||,  ilicy 
were  not  biiyinn'  lliat  made  l>y  \V.  an<l  thai  \\"s 
was  llie  <»riu-iiial  ••(flenlield  Si;ii-cli."'  !hhl,  that 
\V  was  i'lilitled  to  an  injiinclion  lo  l•e^train  (J  froin 
iisiiiu'  the  word  *' (Jlenlield"  on  lii<  lahels  ;ind  I'loni 
represent iiiin"  his  starch  as  "(ilentield  Starch."" 
Jloit.Si'  (tf  Ao/v/.v,  187'i,  Wolherspoon  .'".  Cniiie,  -J/ 
Law  T.  It.  uV.  N.)  \\\)\\\  S.  C.  />'///•  //.  :•  A'-///,  d- 
//•.  Ap.  :»iiS  ;  s.  C,  4:>  L<in> .!.  (X  ,s'.  >  r/.  |:!0:  re- 
versini;-  S.  C,  %\  Lair.  T.  11.  [X.  ^.)  A  i.i:  S.  C.  IS 
Wit  Ida  II.  l)4!>  ;  and  aiiiiuiinu-  S.  ('..  :>-.>  L,nr  T.  li. 
{N.  -s'.)  :2(5:»,  and  S.  (J.,  IS   Wirkhj  li.  .'I'.-i. 

^  TIT).  W'hiM'c  the  name  of  a  plae*.  has  l>y  user 
l)y  a  ])arti<'ular  maker  of  a  ])ar!i('iilar  ailicle  of 
mannractiire.  ac([nii'ed  n  secondaiy  siiiiiiiicafion  in 
connection  with  that  niaimfact iii'e.  and  has  ohlaiiied 
currency  and  value  in  the  market  as  ilic  trade 
(UMiomination  ol"  that  i)airK'nlar  maker's  uoods.  it 
beccjines,  in  connection  with  that  maniilarinre,  llie 
Ijrojteity  ol"  that  maker  as  Jiis  trach'mai'k.  or  as  pai-t 
of  his  trachMnark.     1  bid . 

§  71(5,  The  mime  ol'  an  article,  if  it  Jias  accpiired 
a  name,  should  not  by  an  honest  mannractiirei-  i)e 
put  njx)!!  his  yoods,  if  a  i)revious  maniiractm-ei' 
has,  by  ap])lyini;"  it  to  his  uoods,  ac(iiiii'ed  the  sole 
use  of  that  name.  1  mean  the  sole  use  in  this 
sense  ;  tlitit  his  ,i;'oods  have  accpiired  by  that  des- 
ci'i[)tion  a  name  in  the  market,  so  that  whenever 
that  desi^-iiation  is  used,  he  is  nnderstood  lo  be  the 
make)',  where  people  know  who  the  maker  is  at  all 
— Ol",  if  people  have  been  pleased  with  an  article,  it 


\ 


wm 


i  '!■ 


I1 1! 


I'  Mf 


.  sS 


it!: 


4: 


ml 

]  V 


1 

■-^ 

'. 

■;:^ 

•l. 

1 

I : 
1 

't 

^^ 

i 

''1 

250    \Gco<jrapliical\    Xa^ie. 


[name.] 


should  be  recoi^'iiized  at  once  by  the  designation  of 
the  ai'ticle,  although  the  customei's  may  not  know 
the  name  of  the  manufacturer.  It  may  very  well 
be  that  hundreds  of  ])eople  like  Glciifuid  8;<ir('/i, 
and  order  it  because  they  think  it  is  the  very  best 
starch  that  they  ever  used,  without  having  heard 
the  name  of  Mr.  Wolhers^moit^  and  without  know- 
ing him  at  all.  They  say,  I  Avant  the  thing  that 
bears  that  name,  made  by  the  manufacturer  who 
makes  it  in  that  way,  and  there  being  only  one 
manufacturer  who  does  make  it  in  that  wav,  I  want 
the  article  made  by  tliat  manufacturer.  Lord  Ch. 
IlATiiEKLY,  Iloase  of  Lords,  Ibid. 

§  717.  An  injunction  will  be  granted  on  an  inter- 
locutory motion  to  restrain  the  use  or  imitation  of 
the  name  of  a  place,  used  as  a  trademark,  if  the 
plaintiffi  i)voxes,j)riuia/acle,  that  sucli  name  in  the 
market  has  become  to  mean  the  plaintitf's  article 
obtained  from  such  place.  1872,  Ih'fore  Wickcns, 
V.  6'.,  liadde  v.  Xornian,  Laio  U.  1*4  Eq.  348 ;  S. 
C,  41  Liuo  Jour.  n.  {N.  8.)  Ch.  025;  S.C.,  2G 
L.  T.  n.  UV.  X)  788  ;  S.  C,  20  W.  11.  700. 

^  718.  In  Ai)ril,  1870,  the  ducal  government  of 
Anhalt  granted  to  Z.  the  ex(dusive  right  of  export- 
ing over  the  sea  genuine  kainit,  out  of  the  ducal 
mines  at  Leopoldshall.  On  the  same  day  Z  con* 
i'erred  such  exclusive  right  u})on  the  plaintiffs,  who 
advertised  and  sold  the  kainit,  as  "Genuine  Leo- 
X)()ldsliall  Kiiinit.''  The  X'hiintiffs'  article  attained 
a  liigh  reputation,  and  became  known  in  the  trade 
as  the  i)roduct  of  the  Leopoldshall  mines,  and  was 
distinguished  by  the'  name  of  Le(jpoidshall  from 
all  other  kinds  of  kainit.  The  defendants  offered 
for  sale,  under  the  name  of  "  Kainit  (Leox)oldsalt)," 
kainit,  which  had  not  come  from  the  Leopoldshall 


{(Jeofjraph  leal]       ^xsi  k. 


\_naine.'\ 


251 


milieu.  On  motion,  held  tluit  tlie  i)laintiirs  had 
made  out  a  prima  fade  title  to  tiie  exclusive  use 
ol'  the  wold  '•  Leopold.shali "'  as  a  ti'adeniaik,  and 
that,  on  an  inteiiocutoiy  application,  an  injunction 
should  be  issued  restraining"  the  defendar'ts  iVoni 
using  the  word  ''  Leopohlsalt,"  or  ''  Leopolds  ha  11,'' 
or  any  colorable  imitation  of  the  "  Jjeopoldsjiall  " 
in  connection  with  kainit  biought  into  the  market 
by  them.  Qacre,  whether  the  plaintiiys'  title  was 
sufficiently  established  as  against  a  person  who,  in 
ignorance  of  any  claim  on  tlie  part  of  the  plaintilf, 
had  sold,  or  oifered  for  sale,  the  raw  Leoi)oldsliali 
kainit,  which  he  had  lawfully  got  into  his  posses- 
sion, Avitii  good  reason  to  believe  that  it  was  so. 
Ibid. 

%  710.  The  plaintiifs  were  engaged  in  tlie  busi- 
ness of  manufacturing  cement,  or  water  lime,  froiu 
quarries  or  beds  lying  near  Akron.  Ei'ie  county,  X. 
Y.,  designated  and  sold  as  "Akron  Cement,"  and 
''Akron  Water  Lime,"  the  packages  containing 
the  same,  when  sold  and  oifered  for  sale,  having 
attached  to  eacli  of  them  these  words  :  *'"  iS'ewmairs 
Akron  Cement  Co.,  manufactured  at  Akron,  X.  V., 
The  liytlraulic  Cement  known  as  the  Akron  Water 
Lime."  Fart  of  these  words,  viz.  :  Aewman's 
Akron  Cement  Co.,  was  printed  in  capitals,  and 
part,  viz.  :  Akron  Water  Lime,  in  large  capitals. 
The  deiendants  being  engaged  in  manufacturing 
and  selling  a  similar  article  from  quarries  or  beds 
situated  near  {Syracuse,  Onondaga  county,  X.  Y., 
and  knowing  that  water  lime  cement  was  manufac- 
tured and  sold  by  the  plaintiffs,  under  the  name  of 
"Akron  Water  Lime,"  and  "Akron  Cement," 
called  their  own  beds  tlie  "Onondaga  Akion 
Cement  and  AVater  Lime,''  and  after  that,   they 


M 


;.*  1 


Ift! 


2o2    \Gi'o<jraphk'(il\    Xame. 


{)iame.'\ 


It     S'. 


sold  Mi('  water  lime  and  oenieiit,  prepared  by  them, 
with  a  label  on  ea(,'li  packa^'e,  haviiii;'  these  words 
upon  it:  "Alvord's  Onondaga  Akron  Cement  or 
Watei-  Lime,  maniiraetnred  at  tSyraeuse,  New 
York."  isuch  water  lime  and  eement  being  placed 
upon  the  market  and  sold  in  the  same  places  where 
that  manufactm-ed  by  the  plaintUl's  was  sold  and 
used.  /A/c/,  that  the  word  ''Akion,"  as  used  by 
the  plaintiJl's,  was  their  trademark  by  which  they 
designated  the  article  manufactured  and  sold  l)y 
them  ;  ami  that  they  were  entitled  to  be  jirotected 
in  such  use  of  it,  by  an  injuncticm  restraining  the 
defendants  from  making  use  of  the  word  "Akron  " 
as  their  trademai'k.  1872,  iV^cw  York  Comiuis-sioa 
of  A/)jM'aI,s\  iS'ewman  v.  Alvord,  ol  jS\  Y.  181)  ; 
ailirming  S.  C,  3.")  Jlow.  Fr.  108  ;  S.  C,  41)  Bcrh.  .kSS. 

^  7'20.  Ifi'ldaLso^  that  the  case  was  not  one  of 
such  doubt  as  to  recpiire  the  i^laintillV  right  to  be 
first  established  at  law.     Ibid. 

^12\.  Ildd  further,  that  to  defeat  the  plaint- 
ilfs'  right  to  appi-opriate  the  term  "Akron"  on  the 
ground  that  it  had  previously  been  in  common  use, 
such  a  use  of  it  must  be  shown  as  wOuld  extend  to 
and  include  the  del'endauts.  That  until  that  Avas 
done,  the  use  nuide  of  it  by  the  x^laintiffs  might 
well  be  exclusive  of  the  defendants,  without  being 
so  as  to  the  inhabitants  of  Akron.  That  assuming 
(although  not  so  deciding)  that  other  persons  who 
owned  quarries  at  or  near  Akron,  had  the  right 
alst)  to  call  their  cement,  Akron  Cement,  yet  it  was 
clear  that  the  plaintiifs,  upon  the  facts  of  the  case, 
were  entitled  to  i)rotection  against  the  defendants. 
Tbld. 

^  I'lVa.  I  can  perceive  no  reason  wliy  ii  trademark 
niay  not  be  the  name  of  ti  i^lace.     Eaul,  C,  Ibid. 


1     .    ''J.;  n\ 


lit 

'as 


[Gcor/raph  lea  ?]       X  A:sr  k. 


{nnmp.'] 


253 


§  722.  As  a  .irencral  rnlo  <i'po,2,'i"a])lii<'al  naiiios 
cannot  bo  a})]>i(»i)rlate(l  as  tradtMiiarks.  and  tlicir 
uso  1)A' an<»lh<'i"  will  not  be  enjoined  :  but  the  i'nl(» 
lias  its  ex('e])tions,  wluM-e  the  inlentioii  in  the  adop- 
tion of  the  desciiptive  word  is  not  so  much  to  iiidi- 
rate  t!ie  jilace  of  manufacture,  as  to  iuti'ench  ni)on 
the  ])revious  use  and  ])oi>ularity  of  anothei-"s  tiade- 


niai'k.     IS?;!.  ^V 


^11  pre  III  (' 


(H. 


I 


jea    r 


Wolf,  b')  Ahh.  Pr.  (X.  X.)  1  ;  S.  (\.  1  T/umip.  & 
C.  (yO;  S.  ('.,  4(5  Iloin.  Pr.  IT)?;  modi f vino-  S.  C, 
V.\  Ahh.  Pr.  (X  X.)  ;]81). 

^  72:5.     Plaintilf  luid  niannfactni-ed  at  AVoi-ccster- 
shii'(>,  foi'  many  years,  an  articl(3  known  as  "  AVor- 


cestershire 


S: 


WWQ 


Defendant  commenced  the 
mannlactnre  at  anotlier  place,  of  an  article  oC 
similar  character,  Avliich  lie  named  "  Worcester- 
shiie  Sauce.''  The  labels,  wrappei's,  &c.,  of  [ilaint- 
ilfs  article  were  closely  imitated  in  size,  color  and 
api)eaiance.  and  were  irresistible  proof  of  an  inten- 
tion of  the  defendants  to  deceive  the  pnblic  and  to 
lead  i)urchasers  to  suppose  that  the  defendant's 
preparation  was  the  oritcinal  AVorcestershire  Sauce, 
so  lon<x  mannfactui'ed  by  the  plaintiffs.  Jfihl,  that 
whei'(^  such  an  intenticm  exists,  the  defendants 
should  not  be  protected  in  their  fraudulent  innta- 
tion  by  the  pretense  that  in  the  words  emi)l()ye(l 
the  name  of  a  place  and  the  word  descrijjtiye  of  the 
article  only  are  nsed.  That  the  defendants,  doubt- 
less, mi.ii'ht,  nnder  proper  circumstances,  employ 
the  name  of  a  place  where  an  ai'ticle  is  nuinurac- 
tui'ed,  as  well  as  the  Avord  descriptive  of  its  chai'ac- 
ter ;  but  such  woi'ds  mnst  be  employed  honestly 
and  properly,  and  not  with  a  desiu'n  to  imitate  and 
deceive  to  the  detriment  of  another.  That  plaintill' 
was  entitled  to  an  injunction  prohibiting  the  nse  of 


ii 


-;1 
-.■11 

■     p. 

|.  '^■■^ 

,•■'.1' 

'..  5,~' 

1 

11'.    . 


254    [Geoff  rap7/ical]    Xame. 


[name] 


V  la 


1  i 


I'  h 


r  .t 


the  Avords  '•  Worcestershire  Sauce"  on  defendant's 
bills,  labels  and  wrappers.     Ibid. 

§  724,  As  a  general  rule  the  name  of  a  town  or 
city  cannot  be  exclnsively  appropriated  as  the 
tradeniai'k  of  any  one.  1874,  Supreme  Cofirt  of 
Pen/hS//Iran/(f,  Cflendon  Iron  Co.  v.  Uliler,  7."5 
Peiin.  '>S7.  4(57. 

$5  72;").  The  plaintiffs  adopted  the  trademark 
"Glendon"  for  the  iron  manufactured  by  them; 
the  place  wheie  their  furnaces  were  was  afferwards 
made  a  borough  by  the  name  of  Glendon.  Another 
company  afterwaixls  built  a  furnace  at  Glendon, 
and  used  the  mark  '*  Glendon  "  on  the  iron  of  their 
manufacture.  IlehJ,  that  the  latter  company  could 
lawfully  use  said  mark  of  *'  Glendon,"     Ibid. 

§  72(5.  The  commission  of  a  lawful  act  does  not 
become  actionable,  although  it  jiroceerl  from  a 
malicious  motive.     Ibid. 

§  727.  The  plaintiffs,  under  a  grant  from  the 
ownei's,  ac(pured  the  exclusive  right  of  importing 
and  selling  in  Great  Britain,  the  mineral  water 
produced  by  a  natural  spring,  called  "  Apollinaris" 
at  Arhweiler,  in  Prussia,  wdiich  had  for  some  years 
been  known  and  sold  in  the  English  market  under 
the  name  of  "Apollinaris  Water,"  and  advertised 
and  sold  the  same  as  "Apollinaris  Water."  Sub- 
sequently, the  defendants  made  and  sold  an  arti- 
ficial mineral  water,  being  the  chemical  equivalent 
of  the  natural  water,  under  the  name  and  description 
of  "London  Apollinaris  Water,  possessing  all  the 
properties  of  the  natural  water."  Held,  on  motion, 
that  the  plaintiffs  were  entitled  to  an  interim 
injunction  to  restrain  the  use  of  the  words  "Lon- 
don Apollinaris  Water,"  or  of  any  other  name  of 
which  the  word  "Apollinaris"  so  formed  part  as  to 


[Gcorp-apli  lcaT\       Xa  y\r.. 


[)}' I )))('.'] 


oil; 


be  cnlf'iilated  to  niislend  the  public.  IST."),  Vicp 
Ch.  B(iro}i\s  r//.,  A})olIinni'is  Company  (limittnl) 
?•.  NoiTish,  '^'^  Lam  T.  B.  {X.  X)  242. 

§  728.  PlaintifF  nnd  (l«4'eii(lant  both  nimnifarnired 
tobacco  at  Dui-ham,  X.  V<.  I  ft  hi,  that  ncithci-  ])ai'ty 
could  exclusively  iip])i'()print<»  the  word  "•  Durhtuii  " 
as  a  ti'adeinrii'k.  ISTn.  Si/prriiw  VI.  of  KorUi  ('a ro- 
ll na,  Blackwell  v.  Wright,  73  N.  c'  'MO.  Vnxt  see 
§  1390 . 

§  720.  I^laintiff's  trademark  for  the  cigni-ettes  oC 
his  mnniil'actui'e  consisted  of  the  words  "St. 
James,"  the  device  of  rays  of  the  sun,  and  tiie 


numerals 


Defendants  imitated  said  trade- 


mark npon  cigarettes  manufactured  by  them  and 
defended  an  action  brought  to  restrain  snch  imita- 
tion, claiming  that  plaintiff  had  no  exclnsive  i-ight 
to  the  words  "St.  James"  as  it  was  a  geogi-aphical 
name,  nor  to  the  numerals  "  i^,"  as  they  contended 
that  such  numerals  represented  that  plaintiif's 
cigarettes  were  made  one-half  of  Periqne  and  one- 
half  of  Turkish  tobacco.  The  conrt  found  that 
although  the  cigarettes  might  l)e  so  composed,  said 
numerals  did  not  indicate  the  fact ;  that  they  might 
as  well  relate  to  price,  to  size,  to  quality,  to  num- 
bers, as  to  quality  of  tobacco.  The  court  also 
found  that  dt'fendants,  by  Ihe  nse  of  the  words 
"St.  James,"  intended  to  defrand  the  pnblic  into 
the  belief  that  when  they  bought  cigarettes  with 
those  words  upon  the  labels,  they  were  buying 
cigarettes  of  the  i)laintiff's  manufacture.  Defen- 
dants were  enjoined  from  the  use  of  said  words, 
device  and  numerals.  1877,  N.  Y.  i^upreme  CL  K 
T.,  Kinney  ??.  Basch,  imreported. 

§  730.  "The  interference  of  courts  of  equity,  in- 
stead of  being  founded  upon  the  theory  of  protec- 


'f 


■I? 


'■  I 


M.,  il 


,(.:        71/. 


TB" 


!:■' 


;^Pi- 


256 


[Pr//(';//r^]       Xame. 


[nome  of.'] 


tion  to  tlio  oAvners  of  tnulomarks,  is  now  supported 
mainly  to  i)i'('V(Mit  iVauds  n])on  the  public.  If  tlie 
use  of  any  words,  numerals  or  symbols,  is  ado]ited 
for  the  pui"])Ose<)f  defiaudinti,'  the  j)id)li(\  the  courts 
will  iutcifei'c  to  i)rotect  the  public  JVom  sucli 
fi'audiiloiit  infi'Ut,  even  thouiih  the  person  askiug 
the  iuteiv<'nlloii  of  the  court  may  not  have  IIkm.'x- 
clusive  i-ig'lit  to  the  use  of  those  words,  numerals  or 
syinbols.  This  doctrine  is  fully  sui)ported  by  the 
latest  En^lisli  casi^s  of  Lee  c.  Haley,  f)  (y/i.  App. 
Cases,  Law  21.  If)."),  and  \Votlierspoon  v.  Curiie, 
Laio  R.  n  Ell  (J.  d'  Jr.  App.  J  louse  of  Lor  Us  ^  508, 
and  also  in  the  case  of  Newman  ti.  Alvord,  51  N.  Y. 
189."  VAX  BnuxT,  J.  Ibid. 
See  also  §§413,  590,  823. 


;g: 


■:■,*  ■ 


■1. 


YII.  Patentee,  name  of. 

§  731.  The  pru'chaser  of  a  patent  and  of  the  right 
to  use  the  naim^  of  the  patentee  for  the  goods  mtm- 
ufactured  by  him  thereunder,  has  no  exclusive  right 
to  use  of  such  name  after  the  exjnration  of  the 
patent,  and  another  manufacturer  will  not  be  pre- 
cluded from  using  such  name  in  representing  that 
his  goods  are  manufactured  according  to  the  i)atent, 
provided  he  does  not  do  so  in  a  maimer  liable  to 
mislead.  1853,  Vice  Ch.  Wood's  CL,  Edelsten  ?. 
Alck,  11  Hare,  78;  S.  C,  18  Jurist,  7;  S.  '  .,,  "' 
Ear/.  Lain  ct  Eq.  51. 

^  732.  ^Vhere  articles  of  a  particular  kind  ii  ^ 
become  genei'ally  known  in  commerce  under  the 
name  of  the  original  manufacturer  (or  patentee,  as 
the  case  may  be),  any  person  has  a  right,  after  the 
expiration  of  the  patent,  to  manufacture  such 
articles  and  sell  them  under  that  nam*.' ;  but  he 


,'t  i. 


[Patentee,]         Name.        [nnme  nf.'\        2i)l 

may  not,  l)y  inscribing  tlie  name,  as  a  pi'ojx^r  name, 
on  Ids  sliop  front  or  otherwise,  lead  tJie  i)Mbli(;  to 
beHeve  tliat  be  is  selHn,ir  as  the  agent  J'or  the  origi- 
nal nianiiracturer.    The  name  "Wheeler  A:  Wilson"' 
machine  held  to  have  come  to  signify  the  thinu' ma  nil- 
factiired  accordingto  th(^  i)rinci])leof  \Vhe<>!cr«.\:  Wil- 
s( m  s  1  )a tent .  1  SO!),  ]  \  (J. ,/(/ iiw.s  Ct. ,  Wheeler <.V  W  i  1  s( m 
Mfg.  Co.  c.  Shakes] »( 'a  1'.  IW  Law  J.  E.  (  X.  S.)  (7/.  :!<i. 
<J  7-];}.     Since  18013   the  i)nisners  had  sold   their 
machines  as   Singer  «e\ving   machines,    and    their 
machines  were  exchisively  known  and  sold  in  the 
market  nnder  that  name.     It  was  proved  that  the 
name    "The   Singer    Machine,"'    or   "The   Singer 
Sewing  Machine."   meant,   and  in   tlic  fi'adc^  was 
well   iindeistood  as  meaning,  a  machine  manufac- 
tared  l)y  Mr.  Singer,  or  by  the  Singer  Manufactnr- 
ing  Company.     It  was  not  proved  that  the  name 
indicated  any  special    pecnliarity  in   i)i'incii)le  or 
constriK'lion.    IlchJ,  that  thongh  there  is  no  [)atent, 
and  other  i)arties  ai-e,  thercfoi'e,  entitled  to  mann- 
I'actnre  identically  the  same  article.  th«^y  aio  not 
entitled  to  sell  it  nnder  the  same  name,  but  that  a 
maker's  name  so  nsed  and  appropriated  is  just  as 
good  a   trademark,    and    one   as   exclusively   and 
effectually   appropriated  by  Inm   as  if  it  were  a 
trademark  not  consisting  of  a  word  at  all.  bnt  of 
some    particular    device    in    drawing.       Intei'dict 
granted  against  tlie  defendeis  from  selling  machines 
not  made  by  the  Singer  Manufactnring  Com))any 
as  "  Singer  s  Singer  l^hlchines,"  or  "Singei-  Sewing 
Machines."    1873.  Ct.  of  Session,  Singer  Manuf.  Co. 
V.  Kimball,  10  Scottish  L.  IL  1713 ;  S.  C,  4.")  Scottish 
Jurist,  201.  But  see  Singer  Mfg. Co.  ?\AVilson.  24  IT. 
li.  102:3;  S.  C,  45/..  .7.  li.  {N.  S.)  Ch.  490;  S.  C, 
84  L.  T.  II.  N.  S.  858. 


■  ■*  t 


M 


'4:.n--i 


.m 


258 


Newspapeks — Numerals. 


§  7!34.  The  words  imprinted  upon  a  patented 
article  of  manufacture  are  ccmimon  property  from 
tlie  date  of  tlie  expiration  of  the  patent.  187."),  fj. 
K  CirciiU  Ct.,  III.,  Tucker  Manufacturing  Co.  v. 
Boyington,  9  Off.  Gaz.  {U.  >S'.  Patent  Office)  455. 

%riio.  Held,  that  the  words  ''Tucker  ^^pring 
Bed,"  as  applied  to  a  sx)ring  bed,  were  common 
property  from  the  date  of  the  exjiimtion  of  the 
jKitent  in  such  bed.  That  Avhen  a  party  otlier  than 
the  one  who  formerly  owned  the  patent  manufac- 
tured a  spring  bed,  lie  had  the  right  to  designate  it 
as  the  "Tucker  Spring  Bed,"  indicating  that  it 
was  manufactured  under  the  Tucker  patent.    Ibid. 

See  Cheavin  v.  Walker,  35  L.  T.  B.  {N.  S.)  757  ; 
Ransom  v.  Bentall,  3  L.  J.  It.  {N.  /s.)  Ch.  IGl  ; 
Howe  t>.  Howe  Machine  Co.,  50  Barb.  236. 


NEWSPAPERS. 

See  Public atioj^s. 


NOM    DE   PLUME. 

See  §  886. 


.,1 

f 

I 


V.    'S 


'.f 


NOSTRUMS. 
See  Misrepresentation. 


NUMERALS. 

§  740.    The  name  of  a  manufacturer,  or  a  system 
of  numbers  adopted  and  used  by  him  in  order  to 


It; 


NUMKltALS. 


259 


desii^nate  goods  oC  his  make,  may  be  the  subject  of 
the  same  protecthm  in  equity  as  an  oidinaiy  trade- 
mark. 18G0,  Vice  Ch.  WoixV s  r/.,  Ainswortli  r. 
\Valmesk;y,  Law  R.  1  Eq.  .0.8  ;  S.  (J.,  I'i  .liirhl  k  V. 
X.)  20.");  S.  C,  14  Wecldij  R.  30;? ;  S.  C,  14  Ln ii^ 
TliiK'H  (.Y.  .S'.)  220  ;  S.  C,  35  Lam  Journal  (lY.  N  ) 
(Jh.  352. 

§  741.  The  name  and  address  of  a  manufaeturci. 
used  by  liim  as  a  trademark,  may  have  added  fo 
and  e<mneeted  with  it  some  peculiar  dcviee,  vignct  x^\ 
embk:»m,  symbols,  forms  or  figures  adoi)ted  as 
auxiliary  to  the  name  and  addi'ess  in  declaring  the 
true  origin  and  owuershij)  of  his  merchandise  and 
a  wrcmgful  violation  of  such  a  trademark  mav  Ix' 
accomplished,  even  tlumgh  the  name  of  the  imita- 
tor be  substituted  for  that  of  the  original  manufac- 
turer, by  such  an  imitation  of  the  device,  vignette, 
emblem,  sj-mbols,  form,  color  or  iigui'e  alone,  as 
indicates  a  design  to  deceive,  and  is  calculated  to 
deceive  the  public  as  to  the  true  origin  and  owner- 
ship of  the  goods.  AYliere  numbers  are  associated 
with  the  name  of  the  manufacturer  upon  labels  cf 
of  a  certain  form,  color,  and  general  arrangement, 
and  in  connection  with  such  labels  are  used  by  him 
to  indicate  his  own  goods,  they  may,  by  virtue  of 
that  connection,  form  an  imi:)ortant  part  of  a  trade- 
mark. 18G8,  Supreme  Ct.  of  Conn.^  Boardman  r. 
Meriden  Britannia  Co.,  35  Conn.  402. 

§  742.  A  manufacturer  has  the  right  to  distin- 
guish the  goods  manufactured  by  him,  by  any 
peculiar  mark  or  device,  lie  may  select  and  adopt, 
by  which  they  may  be  known  as  his  in  the  market, 
and  he  is  entitled  to  the  protection  of  a  court  of 
equity,  in  the  exclusive  use  of  the  peculiar  marks 
or  symbols  appropriated  by  him,  designating  or 


Ifr 


m 


-v', 


m 


^,\. 


•k\ 


u 


f ''  vm" 


\          ! 

^ 

!  ^ 

i 

'  ;  *■ 

% 

!  ;-  5 

% 

->^'..^^.i^*^ 

f 

|l  ;'>■ 


M... 


'rl 


rf 


.Iff 


2G0 


Numerals. 


iiidicUiutif  the  true  orii^in  or  ownorsliip  of  the 
art  ides  fo  whu;h  tlioy  are  aflixed.  Plaintillf,  a 
iiLniiit'actiirer  of  steel  pens,  lia<l  for  many  years 
iiinnufaetured  a  ])eouliar  pattt^rn  on  which  was 
impressed  tli(;lignres  'SJOJr'  and  the  words  "  Josepii 
(jrillott,  extr.i  line."  Tlie  pens  were  put  up  in 
paper  lioxes,  ^\^th  ;i  label  on  top  containini>;  the 
same  name  and  nnmends.  Tlie  pens  were  kno\Mi 
and  ordered  l)y  dealers  as  "  JJIKi''  pens.  Such  ligures 
did  not  express  any  quality  or  size  of  the  pens,  but 
were  selected  arbitrarily  by  plaintilf  to  tlistingnish 
the  pattern  or  character  of  pen  to  which  it  was 
applied.  Defendants  began  the  maniifaxjture  and 
sale  of  a  steel  pen,  closely  resembling  plainlity's 
])('n  in  every  particular,  on  which  was  stamped 
•':{o:r'  and  " Esterbrook  &  Co.,  extra  line."  The 
p(Mis  were  put  up  in  boxes  of  the  same  size  and 
similar  to  those  of  plaintilf,  with  a  label  containing 
the  same  words  and  figures,  except  "Esterbrook  & 
Co.,"  instead  of  "Joseph  Gillott."  In  an  acti(m 
bi-ought  by  j^laintilf  to  i"estrain  defendant  from 
using  the  ligures  ''1501?"  upon  these  pens  and  boxes : 
If('/(?,  that  plaintifl'  had  acquired  the  right  to  the 
exclusive  use  of  those  iiguies  jis  a  trademark,  and 
was  entitled  to  the  relief  sought.  1872,  JY.  Y.  Com. 
of  Ap.,  Gillott  r.  Esterbi'ook,  48  JVeio  Yorl;  874; 
affirming  S.  C,  47  Barb.  455. 

§  743.  Plaintilf  s  trademark  for  umbrellas  con- 
sisted of  the  numerals  "140"  in  a  white  oblonu' 
placed  in  the  ceuti'e  of  a  live-pointed  star.  De- 
fendants used  a  mark  for  und)rellas,  consisting  of 
the  number  "142"  in  the  centre  of  a  sun-burst. 
The  evidence  showed  that  the  use  of  numerals  as 
trademarks  among  dealers  in  umbrellas  was  com- 
mon— and  that  no  one  with  ordinary  intelligence 


NUMKUAI, 


201 


or  attention  could  inisttilve  tlieoiu;  (Lu'icoof  •'  II'.'." 
&t'.,  I'or  the  other  on<!  of  "  l4o,"  &c.  An  injiiih'- 
tion  asked  for  by  tlic  [)hiintilF  was  refust^'d.  IST:', 
jV.  Y.  CL  of  Com.  PUu.s;  K  T.,  Dawes  c.  Da\  ics, 
uerei)orted. 

§  744.  Since  187i},  tiM'  phiVitilf  phiccd  iipoii  his 
l)ack;iu'<>s  of  cigarettes,  trjiongst  other  traih'iiunks. 
an  Eastern  fez  surroiuuled  hy  rays  of  ligiit ;  also. 
the  numerical  symbol  r<  pi-inted  in  bold  chaniders. 
in  red  color,  with  the  bar  between  the  two  liuiires 
obiicxue  and  nearly  upiight  ;  with  tlu;  ligiue  I 
elevated  on  the  left;  with  I  he  tlgui-e  2  dejires^-ed 
on  the  I'ight  ;  the  symbol  as  a  whole  being  of  such 
size  that  the  circumferi'nce  of  a  ciicle  havinu-  a 
radius  of  five-eighths  of  an  inch,  would  jusl  iucliKle 
all  of  its  points.  This  character  of  f<  v.as  regis- 
tered in  the  U.  S.  patent  oHice  as  a  trad<'mark  iu 
Maj',  187i).  The  original  idea  of  the  comi>laiiiMnl  i:i 
using  said  character  ^^^  was  to  indicate  that  the 
cigarettes  stamped  with  it  were  made  uj)  of  tuo 
kinds  of  tobacco,  in  the  proportion  of  hall'  aiil 
half.  Defendant,  in  April,  187."),  began  to  [)ur  i;p 
cigarettes  stamped  with  the  same  numerical  chai- 
acter  i^  in  broad,  scarlet,  red  color,  with  the  (.li\id- 
ing  bar  oblique  and  nearly  upright,  and  of  size 
identical  with  the  same  character  as  used  by  com- 
plainant. The  plnintilf  tiled  a  bill  for  a  peri)etual 
injunction  forbidding  the  use  of  said  trademark  by 
defendant.  I/eld,  that  said  numerical  character 
does  not  c.rprcss  the  idea  of  the  tobacco  being  half 
and  half,  but  that  it  uullculcd  such  idea ;  that 
therefore,  the  case  being  one  of  nicetj^  and  doubt, 
an  injunction  against  the  use  of  said  character  in 
any  form.,  upon  goods  similar  to  the  plaintilfs 
would  not   be   granted,    but   that  the    defendaRi- 


n 

sTrf 

w\ 

,    ,1 


I 

f; 


|5 


^« 


ri 


il    ■'!■ 


11 


262 


Nl'MKllALS. 


vslioiild  1)0  enjoined  from  the  use  of  any  inii>rinr 
ui)on  Ills  ^oods  of  the  chaiacter  y^  in  th(^  form,  si/.c. 
coloi'  and  style,  as  nsed  by  plaintilf,  and  that 
jilaintilf  had  the  right  to  the  exclusive  iis<>  of  said 
('liara<'ter  in  the  form,  coloi',  size  and  style  in  which 
!)(>  had  used  it.  I/cff/,  further,  that  if  lluMise  by 
liie  comphdnant  of  said  character  t^  had  been  abso- 
lutely aibitrary,  theie  could  be  no  (inestion  of  his 
exclusive  right  to  use  it  stamped  in  any  form  ni)on 
liis  goods.  1877,  U.  S.  CIrcKif  CY.,  \'ii(/!iii(i. 
Kinney  v.  Allen,  4  Am.  Lnio  Times'  IL  {N.  S.) 
2.18. 

5? 


Plaintiflf  used  the  numeials  "  J/^  "  in  con- 


iiection  with  certain  words  and  a  device  as  a  trade- 
mark for  cigarettes  manufactured  and  sold  by  him. 
Defendants  imitated  said  tiadeniark  ujion  their 
cigarettes,  and  in  an  action  brought  by  phiintilf  to 
restrain  such  imitati(m  claimed  that  the  us(^  of  said 
numerals  by  the  plaintiff  was  intended  to  rei)ies('ii( 
that  his  cigarettes  were  made  one  half  of  Pericpie 
and  G/ie  lialf  Turkish  tobacco.  The  court  found 
that  altiiough  plaintiffs  cigarettes  might  be  so  com- 
posed, said  numerals  did  not  indicate  the  fact  ;  that 
they  might  as  well  relate  to  price,  to  size,  to  qual- 
ity, to  numbers,  as  to  the  quality  of  the  tobacco, 
and  consequently  coidd  not  be  descriptive  of  any 
particular  quality,  except  as  they  may  have  been  so 
used  in  connection  with  the  plaintiff's  label.  /A7c/. 
therefore,  that  plaintiff  was  entitled  to  protection 
in  the  use  of  said  numerals  in  connection  with  his 
cigarettes.  1877,  JV.  Y.  Supreme  Ct.  8.  2\^  Kinney 
1).  Basch,  unreported. 


k  ■ 

■i; 


See  also  §§  510,  656,  674,  947. 


One's  Own  Name— Ouioin  and  Ownkrsi   p.    2G3 

ONE'S  OWN  NAME. 

See  Namk,  g  OOO,  et  seq. 


OPERATION  OF  LAW. 

Acquisition  of  tnideiiuiiks  by  operation  of  law. 
See  §§  85,  97,  91),  121,  13o,  142,  14:3,  149. 


''J  < 


ORIGIN  AND  OWNERSHIP. 

§  7;j0.  The  owner  of  an  original  ti-ademark  has 
an  undoubted  right  to  be  protected  in  the  exclusive 
use  of  all  the  marks,  forms  or  symbols,  that  were 
appropriated  as  designating  the  true  oiigin  or 
ownershii)  of  the  article  or  fabric  to  which  they  are 
alfixed  ;  but  he  has  no  right  to  an  exclusive  use  of 
any  words,  letters,  ligures  or  sj-nibols  wliich  have 
no  relation  to  the  origin  or  owneishij)  of  tiie  goods, 
but  are  only  meant  to  indicate  their  name  or  qual- 
ity, lie  has  no  right  to  appropriate  a  sign  or  sym- 
bol which,  from  the  nature  of  the  fact  which  it  is 
used  to  signify,  others  may  employ  with  equal 
truth,  and  therefore  have  an  equal  right  to  emph)y 
for  the  same  purpose.  AV^re  such  an  a]iproi)ria- 
tion  to  be  sanctioned  by  an  injunction  the  action  of 
a  court  of  equity  would  be  as  injurious  to  the  pub- 
lic as  it  is  now  beneiicial ;  it  would  have  the  effect, 
in  many  instances,  of  creating  a  monopoly  in  the 
sale  of  particular  goods,  as  exclusive  as  if  secured 
by  a  patent,  and  freed  from  any  limitation  of  time. 


h'  = 


■  |i 

i-'i 

(■■fl 


264 


Origix  and  Owxersiiip. 


1849,    N.    Y.    J^Nprr/or   Ct.  S.   T.,  The  Anioskea<,^ 
Mf  g  Co.  i\  Spear,  2  Saiulf.  Hup.  CI.  m). 

J$  7.") I.  There  was  no  evidence  that  the  mark, 
which  con.si.sred  of  the  initials  of  a  firm  surmounted 
by  a  cr(jwn,  was  ever  current  or  accepted  in  tlie  mar- 
ket as  a  reju'esentation  of  the  pers(ms  who  manu- 
factured, or  of  the  p'ace  of  manufactui-e,  or  other- 
wise than  as  a  brand  of  quality;  there  was  nothing 
to  show  that  tlie  iron  marked  with  the  initials  ever 
had  a  reputation  in  the  market,  because  it  was 
believed  to  be  the  actual  manufacture  of  those  who 
used  the  mark.  Held,  that  said  mark  was  a  trade- 
mark properly  so  called,  /.  e.,  a  brand  which  has 
reputatit)n  and  currency  in  the  market  as  a  well 
known  sign  of  quality,  and  would  be  protected  by 
injunction.  18G4,  Before  Lord  Vh.  Wesibury  on 
(Appeal,  Hall  v.  Barrows,  10  Jurist  (lY.  aS".)  5o  ;  S. 
C,  12  WeeJdi/  It.  322;  S.  C,  0  Lcm  Times  R.  {N. 
K)  oGl  ;  S.  0.,  :?3  Law  J.  II.  {N.  8.)  Ch.  204  ;  re- 
versing S.  C,  0  Jurist  {N.  H)  483;  S.  C,  11 
WeeMi/  It  525;  S.  C,  8  L.am  Times  {N.  >s'.)  227; 
S.  C,  152  Law  Jour.  li.  {N.  S.)  Ch.  548 ;  S.  C,  1  N. 
It.  543. 

§  752.  By  the  common  law,  the  manufacturer  of 
goods,  (jr  the  vender  of  goods  for  whom  they  have 
been  manufactured,  has  a  right  to  designate  them 
by  some  peculiar  nan^e,  symbol,  figure,  letter,  foi'm, 
or  device,  whereby  thej'  may  be  known  in  the  nuir- 
ket  as  his  own,  and  l)e  distinguished  from  other 
like  goods  manufactured  or  sold  l)y  other  persons  ; 
and  when  original  with  him,  the  owner  of  such 
mark  will  be  protected  by  the  courts  in  its  exclu- 
sive use,  but  only  so  far  as  it  serves  to  indicate  the 
origin  and  ownership  of  the  goods  to  which  it  is 
attached,  to  the  exclusion  of  such  symbols,  figures 


:'m'- 


Okigix  and  Owneksiiit'. 


265 


and  combination  of  woi'ds  wliifh  may  be  inlerblend- 
ed  with  it,  indicating  tlieir  name,  kind  or  ([nality. 
Held,  tliat  wliere  the  allei^ed  indtation  by  dei'end- 
ants  consisted  ol'  a  inctuie  and  label,  which  were 
the  same  as  in  plaintiitV  allt\u-<Hl  tradcmarlv  only 
in  the  nse  of  the  words  "  Washin-i;  Pow(h'r,''  the 
directions  for  tlie  use  of  the  jKiwder.  and  in  use  of 
l)ai)er  of  the  same  color  as  tluit  used  by  plaintiifs, 
there  was  no  infringement  of  iwaintilfs'  trademark. 
1808,  f^apreme  CI.  of  Cal.,  Falkinbui'g-  i\  Lucy,  iJ.j> 
Cal.  m. 

§  1^)'6.  A  trademark  adopted  by  a  manufacturer 
or  merchant  for  his  goods,  to  be  clothed  with  the 
attributes  of  property  entitling  the  ai)pro[)riatoi'  to 
protection  in  its  exclusive  use  nuist,  l-y  word, 
letter,  ligure  ov  symbol,  designate  the  ti'ue  origin 
or  OAvnership  of  the  goods.  When  any  mark, 
symbol  or  device  is  used  merely  to  indicate  the 
name,  ipiality,  style,  or  size  of  an  article,  it  can  not 
be  protected  as  a  trademark.  18(58,  ^^nprcini'.  CI.  of 
Co)ui.,  Boardmtin  /;.  Meriden  Britannia  Co.,  85 
Coiut.  402. 

i?  ITA.  A  n"'ne  can  only  be  protected  as  a  trade- 
mark when  it  is  used  merely  as  indicating  the  true 
origin  and  ownership  of  the  article  oifered  for  sale, 
but  never  when  it  is  used  to  designate  the  article 
itself,  and  has  become  by  adoption  and  iis(^  irs 
proper  appellation.  18(51),  PliUadtlpliki  CI.  (f 
Com.  Pleas,  Pa.,  Ferguson  v.  Davol  Mills,  1  Phlla. 
258  ;  S.  (J.,  2  lirtw.^.  814. 

^  755.  No  property  can  be  accpiired  in  words, 
marks  or  devices  wJuch  do  not  denote  tlie  goods  o/ 
property  or  place  of  business  of  a  person,  but  oid\ 
the  kind  or  quality  of  the  article  in  which  he  deals, 
Ibid. 


:  i 


I    ^1 


1 

1 

I 
1    . 

1 

i 

i 

.    % 

'■ 

1 

li 

2GG 


OllIOIN^    AXD  OWNEUSIIIP. 


hi  1 


§  7.")().  It  is  r(n]nisift'  tlint  the  device  or  symbol 
should  ixmIoiiu  f  lie  odicc  oI"  a  linger  board  and  indi- 
cate the  name  and  ad(h'ess  of  the  manufacturer,  to 
invest  it  with  the  attributes  and  entitle  it  to  the 
l)r()(ection  of  a  trach'niarlv.     //>/>/. 

^  7.")7.  The  l)ill  charged  that  the  com])iainants  are 
llie  nianufactuicrs  of  uoods  known  as  silesias  or 
bleacheil  and  dyed  cotton  twiilings ;  tliat  many 
years  a,i;(>.  by  i^'reat  outlay  of  timt^  and  money,  and 
l)y  imi>roved  machineiy,  «!c(\,  they  succeeded  in 
l)roducinii'  tlie  manufactured  article  in  qu(»sti(m  ; 
and  that  more  than  thirty  years  as^o  they  devised 
and  have  ever  since  nsed  a  cej-tain  trademark  and 
nauK^  for  the  said  uoods,  whi(?li  consists  of  a  circu- 
lar label  with  the  letter  "K"'  in  the  centre,  which 
letter  is  suri'ounded  by  plain  lines  and  oi'namtMital 
tracings  extendinLi;  outwaid  from  the  centie  and 
liavini;'  nothing  written  oi'  i)rinted  upon  it  excei)t, 
a  little  above  the  top  of  the  letter  "K,"'  in  an  open 
space  between  two  of  the  ciriudar  lines,  the  piinted 
letters  "'So.''  and  at  the  bottom  of  the  same  the 
letters  ''Yds."  That  one  of  said  labels  is  i)laced 
on  every  piece  of  goods  manufactured  and  I'oi'warded 
to  market  bv  them,  and  by  long  nse  this  mark  lias 
become  identilied  with  the  said  goods,  and  that  the 
goods  have  come  to  be  known  in  the  markets  of  the 
woild  and  to  the  trade  everywhere  by  the  said 
labels  or  traih^marks,  and  are  known  and  called  by 
the  name  of  the  "  K"  silesias.  That  the  defenchmts 
are  engaged  in  the  manid'actnre  and  sale  of  goods 
similar  in  a])pearance,  but  inferior  in  quality  to 
theirs,  put  up  in  pieces  and  covered  with  wrap- 
jiers  similar  to  those  of  complainants,  and  that 
defendants  affix  npon  one  end  ol"  each  piece  an 
imitation  copy  and   counterfeit  of    said  label  or 


OHKIIN    AM)  OU'NF.nSHIP. 


207 


tracleniurk,  wliereby  defeiulants  iiro  (l«'fi'iiud«'(l  out 
of  their  jn'olits.  Tlx?  (lelVMuhints  denied  the  I'lMiid 
cl'iMi'ued,  and  n^^sei'ted  liijit  tlie  jtlaintilVs'  device 
did  nol  constitute  a  tiadeniaik  such  as  tlw-f  hiw 
will  ]>rotect.  /njtturlion  rrftt.scd^  on  tlu^  ground 
thai  th<'  alleged  ti'a(h'niai'k  lias  no  name,  words, 
signs,  or  luaiks  hy  Avlil<'h  in  any  possible  manner  or 
degree  the  origin  or  ownei'shii)  ol'  comi)lainants' 
goo<ls  ar(^  indicated,  oi'  the  i)lace  of  sale  or  manul'ac- 
tni'e  pointed  out  to  distinguish  tluMii  as  the  com- 
plainants' goods.     JltUL 

i  7r)S.  A  generic  name,  or  si  nanu^  mcM'ely 
descriptive  of  an  artich;  ol'  ti-ade,  of  its  (pialiti(^s, 
ingredients,  oi-  cliara(;teristics,  cannot  W,  em]>loyed 
as  a  tiadeinark  and  tlie  exclusivt?  us(;  of  it  b(» 
entitled  to  legal  protection.  As  was  said  in  tin; 
Avell  consideied  cas<;  of  Anioskeag  Manul'a.ctuiing 
Company  i\  Spear,  '"the  owner  (jf  an  oiiginal  tiade'- 
nuu'k  has  an  undoubted  right  to  be  jji'otected  in 
the  exclusive  use  ol'  all  the  niai'ks,  forms,  or  sym- 
bols that  were  a])[)i'opriated  as  (h'signaling  tlui  true 
origin  or  ownership  of  th(^  article  oi-  fabric  to  which 
they  ai'e  aflixed,  but  he  had  no  right  to  tlu^  exclu- 
sive use  of  any  words,  lettei's,  ligures,  or  symbols, 
Avhich  have  no  relation  to  the  oiigin  or  ownejship 
of  the  goods,  but  ai'(^  only  meant  to  indicate  theii- 
names  or  qualities.  ]Ie  has  no  light  to  ai)i)roi)riate 
a  sign  or  a  symbol,  which  fiom  the  natuie  of  the 
fact  it  is  used  to  signify,  others  may  emi)loy  with 
equal  truth,  and  theiefiu't;  have  an  e(]ual  right  to 
emi)loy  for  the  same  pur])ose."  1871,  U.  N.  *SV/,- 
lyrcme  CY.,  Delaware  &  Hudson  Canal  Comi)any  i\ 
Clark,  18  Walkfce,  311. 

^  7^0.     The  trademark  must,  either  l)y  itself  or 
by  association,  point  distinctively  to  the  origin  or 


'1 


M-V 


!l. 


268 


Origin  and  Owxeksiiip. 


it\: 


tJ"!  '! 


ownership  of  the  niticles  to  whi<.'h  it  is  applied. 
The  reason  of  this  is  tluit  unless  it  does,  neither  can 
he  who  first  adopted  it  be  injured  l)y  any  ai)pro- 
priation  or  imitation  of  it  by  {»thers,  nor  can  the 
l)ubli('.  be  deceived.  The  lirst  appro[)riator  of  a 
name  oi*  device  pointing  to  liis  ownership,  or  whicli, 
by  being  associated  Avith  articles  of  ti'ade,  has 
ac(piired  an  understood  reference  to  the  originator 
or  manufacturer  of  tlie  articles,  is  injured  whenever 
another  adopts  the  same  name  or  device  foi*  similar 
articles,  because  said  adoption  is  in  effect  rejjresent- 
ing  falsely  that  the  i^'oductions  of  the  latter  are 
those  of  the  former.  Thus  the  custom  und  advan- 
tages to  which  the  enterprise  and  skill  of  the  first 
appr()X)riator  had  given  him  a  just  right,  are 
abstracted  for  another's  use,  and  this  is  done  by 
deceiving  the  public,  by  inducing  the  public  to  pur- 
chase the  goods  and  manufactures  of  one  person 
supposing  them  to  be  those  of  another.  The  trade- 
mai'k  must  therefore  be  distinctive  in  its  original 
signification,  pointing  to  the  origin  of  the  article,  or 
it  must  have  become  such  by  association.     I/)id. 

§  700.  The  petitioners'  trademark  consisted  of 
the  words  '-1847,  liogers  Bros.  A.  1."  The  Rogei's 
brotliers  superintended  the  petitioners'  spoon  and 
fork  manufactorv,  directed  as  to  the  style  and 
quality  of  f  ach  goods,  upon  which  said  tradmark 
was  placed,  and  had  the  general  supervisicm  of  the 
manufacturing  and  sale  thereof.  The  petitioners 
furnished  all  the  capital,  power  and  machinery,  em- 
ployed and  paid  laboreis,  and  controlled  the  sale 
and  disposition  of  the  goods  manufactuivd.  The 
respondents  contended  that  said  trademark  did  not 
indicate  the  true  origin  of  the  goods,  J/dd,  that 
the  represeutation  that  the  Rogers  biothers  were 


■!^'( 


Pakties. 


200 


the  nianufjirturors.  was  true  in  a  certain  sense,  but 
lliat  tlio  iK'tilioners  were,  in  anollier  sense,  the 
niannfaehii(Ms.  ''Like  all  othei' syin1)()]s  and  de- 
vices used  as  tradeniarlcs,  its  import  was  nol  at 
lirst  ])erliaps  lully  understood,  The  effect,  as  well 
as  the  value  oi'  a  tradeniarlc,  is  llic  Avorlc  ol"  time 
and  exp(3rience.  This  probably  was  no  exc<»pIion 
to  the  ruh».  However  this  may  be,  it  seems  to 
have  been  well  understood  by  tlie  trade  at  the  date 
of  this  petition,  that  goods  beai-ing  that  stamp 
were  manufactured  by  the  petitioners."  Held,, 
that  the  trademark  snlliciently  indicated  the  origin 
and  ownership  '^^'  the  goods.  1872,  i-'-^uprcme  Ct. 
of  Errors,  Conn.,  Meriden  Britannia  Company  v. 
Parker,  39  Conn.  450. 


■i' ■»■'•,  I 


,   ,'.1 


PARTIES. 


§  70,").  The  plaintiff  and  another  person,  who 
carried  on  distinct  trades  at  different  places  of 
business,  had  derived  from  a  common  ])red(H'essor 
in  their  I'espective  bnsinesses,  the  right  to  use  the 
name  of  Dent  as  a  trademark.  The  defendants 
having  iniVinged  this  right :  Held,  on  demnrrer, 
that  the  plaint Jf,  wilhont  averring  special  damage, 
might  sue  ahnui  for  an  injnnction  and  for  the  d<^- 
livery  up  of  th(3  articles  so  marked  to  have  the 
name  erased.  Ihld,  also,  that  he  miglit  sue  alone 
for  an  account  of  pi'olitsmade  l)y  the  defenihint  out 
of  articles  so  marked,  and  for  payment  to  the  ])lain- 
tiff  of  such  ])art  of  snch  proiits  as  the  ])laintiif 
shonld  be  entitled  to.  18(51,  Before  V.  C.  Wood, 
Dent  ?;.  Turpin,  Tucker  ??.  Turpin,  2  J.  &  IT.  189  ; 


I'^A 


270 


Parties. 


S.    C,   30  Lcno  J.  R.  {N.   f^.)  Ch.  40.-):  S.  C,   7 
Jurist  {N.  .Sf.)  073  ;  S.  C,  4  L.  T.  R.  {N.  .S'.)  037. 

%  700.  Two  persons,  sons  of  tlie  one  who  liacl 
originated  the  nianufactnre  of  certain  toliacco 
pipes  and  designated  tlieni  as  "  ^ontliorn's  Brosely 
Pijies,"  on  tlie  death  of  tlieir  fatliei',  niannfactiired 
at  Brosely,  l)nt  at  separate  establishments  and  for 
their  sei)arate  benefit,  pipes  of  a  like  character.  One 
of  the  brothers  institnted  a  suit  to  restrain  the  use 
of  this  trademark,  the  other  declining  to  join  in 
such  suit,  lldd,  that  the  one  brother  might  alone 
iile  a  bill  for  an  injunction  and  an  account.  1805, 
Before  V.  C.  Wood,  Southorn  «.  Reynolds,  12 
Law  T.  R.  {^^.  S.)  75. 

§  707.  It  is  unnecessary  in  a  petition  for  an  in- 
junction brought  by  one  who  liar,  the  sole  interest 
in  the  trademark,  to  join  as  a  paity  a  silent  partner 
in  the  business  whose  existence  is  unknown  to  the 
public.  180."),  Sf/preme  Ct.  of  Conn.^  Bradley  g. 
Norton,  33  Conn.  157. 

§  708.  When  the  manufacturer  of  goods  wrong- 
fully stamped  with  the  trademark  of  the  petitioner 
conducted  the  business  through  an  agent,  who, 
with  his  knowledge  and  consent,  Avas  held  up  by 
his  principal  to  the  public  as  the  proprietor,  and  as 
far  as  the  public  could  reasonably  judge,  was  the 
proprietor :  Held,  that  an  injunction  against  the 
farther  use  of  the  trademark  should  be  granted  in 
an  action  to  which  the  i^rincijjal  was  not  made  a 
party.     Ibid. 

§  70!).  In  an  action  to  enjoin  the  violation  of  a 
trademark,  persons  who  are  not  the  publishers  or 
makers  of  the  infringing  article,  and  who  are  en- 
gaged as  the  vendors  thereof,  may  be  joined  as  de- 
fendants with  the  former.     The  acts  of  both  parties 


PaPvTNEIISIITP. 


271 


PARTNERSHIP. 


\  n 

are  to  be  regarded  as  kindred,  nnd  botli  ■wrong-doers 
may  be  joined  in  on(^  action.  It  is  enongli  to  snp- 
port  an  injunction  against  s(3veral  persons,  that  par- 
ticular acts  of  fraud,  kindred  in  diameter,  are 
cliarged  against  them.  1807,  X.  Y.  ('oin.  PIcos,  -S'. 
T.,  ilatseil  i\  Flanagan,  2  Abh.  Pr.  (.Y.  .s'. )  4.V.). 

§  770.  In  a  suit  to  enjoin  the  use  of  a  corijoi-ate 
name,  the  corporation  whose  name  is  alh'ged  to  l)e 
wrongfully  used  must  be  a  party  plaintilf  or  de- 
fendant, but  if  such  corporation  refuse  to  bring 
such  suit  upon  request,  its  bondholder  or  creditor 
may  do  so  and  make  such  corporation  a  party  de- 
fendant. 1870,  U.  S.  Circuit  CL  Newby  v.  Ore- 
gon Central  R.  R.  Co.,  1  Dead?/,  009. 

See  also  §§  809,  820. 


i:    1;';:      I; 


§  780.  Injunction  to  restrain  surviving  partners 
from  using  the  name  of  a  deceased  partner  in  the 
firm  of  the  trade  refused.  The  Lord  Chancellor 
said  that  the  use  of  the  testator's  name  could  not 
subject  his  name  to  the  trade  debts,  and  that  the 
fraud  upon  the  public  was  no  ground  for  the  plain- 
tiff's (the  executor  of  the  deceased)  coming  into  the 
court  of  chancery.  1791,  Before  the  Lord  Chan- 
cellor, Webster  v.  Webster,  3  ^wanston,  490. 

§  781.  A  and  B  carried  on  the  business  of  pen- 
cil-makers, under  the  tirm  name  of  A  &  L.  A  died 
and  B  carried  on  the  business  under  the  firm  of  B 
&  Co.,  successors  to  A  &  L.  A's  executor  having 
commenced  the  same  bu&iness,  under  tlie  firm  of  A 
&  L,  an  injunction  was  granted  to  restrain  him 
from  using  that  tirm  name  until  the  right  should 


n 


-    i'  i  1 

,1 

■1 

;'4 

(             ; 

■     !* 

t 

iJ 

?.'• 

•.     ■      fe 

272 


PARTNEIlSniP. 


liave  been  tried  at  law.     3  83."),  Vice  C7f.  f?// a  dwell, 
Lewis  r.  Laiif^'don,  7  Simon,  421. 

^  782.  Altlioii^-U  the  personal  re presenta fives  of 
a  deceased  ])arhier  may  have  a  ri^lit  to  jKirticipate 
in  the  j^i-operfy  in  a  tia(hMnark  owned  by  tlie  lirm, 
the  siii'vivinu-  partner  lias  a  snflieient  intei'est  in  the 
marlv  to  entitle  hini  to  iile  a  bill  to  enjoin  its  use 
by  another.     ]84(),    Vice  CJiancellof  s  67.,  Hine  i\ 

Lart,  U)JurifiU  bX'^ 

§  78;].  11'  two  parties  are  concerned  in  getting  np 
a  medicine,  both  c(mtril)uting  to  the  conqxmnd  as 
a  partiHM'slii])  action,  neitlier  can  claim  the  exchi- 
siv<^  ns(^  of  tlie  name  or  trademark  used  in  connec- 
tion thei-ewith.  18,")!,  Coft'een  v.  Brunton,  H  Mc- 
Lcan,  2:)G{IT.  S.  Circuit  Ct.,  Ind.). 

%  784.  A  former  copartner  may  be  restrained  from 
continuing  the  use  of  the  signs  containing  the  old 
lii'in  name,  without  snflieient  alterations  or  ad- 
ditions to  give  distinct  notice  of  a  change  in  the 
firm.  And  the  absolute  refusal  of  the  defendant, 
befoi-e  suit  brought,  to  remove  such  signs,  dispenses 
with  any  ol)ligation  on  the  part  of  the  plaintiif  to 
contribute  to  the  exjoense  of  the  removal,  or  from 
allowing  I'easonable  time  therefor.  18,") 7,  N.  Y. 
f^iiprciiic  (V.  ^'.  T.,  Peterson  'i\  Humphrey,  4  Abb. 
Pr.  394. 

^  78.").  A  surviving  partner  is  not  entitled,  with- 
out the  consent  of  the  representatives  of  the  de- 
ceased i)artner.  to  use  the  lirm  name  upon  goods 
manufactured  by  himself.  It  seem.^,  that  ii  iirm 
nanus  which  the  lirm  has  rendered  valuable,  is,  like 
other  assets  of  the  partnershij),  held  in  common 
after  the  death  of  one  partner,  by  the  survivor  and 
the  deceased's  I'epresentatives.  ]8,')8,  i\".  T.  Super- 
ior CL  S.  T.,  Fenn  i\  Bolles,  7  Abb.  Pr.  202. 


'v 


If   ^ 


PARTXEnSTTTP. 


27:3 


§  780.  Hobart  IVnn  had  Itcon  in  pnitnorslii])  wirli 
tlie  (lef(^ii(lniit  IjoIIcs  in  tli(>  niaiiiifnctiii'c  (»1'  faiu'ets, 
undor  tlie  li;ni  imnic  of  II(»l)aif  I'\'iin  A:  Co.  In  an 
action  l>ron!i,'ht  ))y  tlio  adniinistrniiix  of  lli(»  <'sfafo 
of  Fenn,  d<M'oas(>d,  to  sftllc  the  i)aitn(M'sliij)  all'aii-s, 
on  applicalion  oi"  iIk^  plaint  ill",  llic  dcfcndanr  was 
enjoinod,  nntil  the  hearing,  from  nsini:'  th:'  name  of 
Hohai't  Frnn,  or  Hobart  l'\Min  A:  Co..  n]»on  any 
lancets  inannfactnrcd  by  tlic  (h'fenchnit.     Ibid. 

i  787.  A,  ])  and  (J  cai'iicd  on  the  l)nsiii(>ss  of  stnft' 
nuM'chants  at  X  under  tli(»  lirni  of  A  A:  Co.  A  sold 
to  W  and  C  hi;?  sliai'e  in  tiio  Inisiness.  and  the  i^-ood 
will  thereof,  and  B  and  C  (with  A's  assent)  an- 
nounced themselves  to  the  world  as  "  I>  it  C,  late 
A  &  Co."  Some  time  afterwaids  A  ivsumed  tlie 
bnsiness  of  a  stnlF  mercliant  at  X  with  othei'  i)er- 
sons,  nndei'  tln^  name  of  "A  &  Co."  and  nnd(!r 
(urcnmstances  sliowing"  it  to  be  his  intention  to 
i'e])i'esent  to  the  imblic,  that  his  was  the  old  lii'm. 
The  coni't  'granted  an  interim  injnnction  I'estraininu^ 
A  from  carryino;  on  the  business  of  a  stnif  nKM'ciiant 
atoi'in  the  iin!nedial:e  neiu'hborhood  of  X  un(hM'  tlie 
lirm  of  "A  &  Co."  or  from  otherwise  lioldini^-  him- 
seli  out  as  tlie  successor  of  the  old  iirm.  ,18r)i),  Vive 
Vh.  Woo(l\^  rv.,  Chnrton?;.  Dou^-las,  rulurl.^f  {N.  K) 
887:  S.  C,  1  //.  y.  Jo/r/h'i.  174;  S.  C.  7  IF.  JL  385. 

>j  788.  The  d(^f(>ndant  was  one  of  the  j)ro])i'ietors 
and  the  editor  of  a  weekly  periodical  called  "House- 
hold Words."  Ilclfl,  on  a  dissoluti(m  of  the  })art- 
niM'ship,  that  he  was  not  justilied  in  advertisinjjj 
that  the  publication  would  be  discontinued  ;  for 
that  the  ri,!j;ht  to  use  the  name  must  lie  sold  for  the 
benefit  of  all  the  partners,  it  beinu;  jiart  of  the  part- 
nership assets.  But  hchl  that  he  miglit  advertise 
the  discontinuance  of  the  i)ublication  as  re^i^ards 
18 


m' 


n  1' 

I!    ^: 


274 


Paktnersiiip. 


himself.     1859,  lioUs  CL,  BviuUniry  r.  Dickens,  27 
Jieara/i,  M. 

§  78'.),  On  tlio  dissolution  of  nnd  windinu;  uj)  of  n 
]>jntn<'rslii]),  where  a  valiiMhle  jKirt  of  the  ]):irtiier- 
siiip  consists  in  the  ,ij;ood-will  of  the  l)iisiiu\ss  cariitvl 
on  by  file  ])artners  (piiblisliini;"  a  newspaiuM)  such 
value,  as  much  as  the  furniture  of  the  olliciMtrdrhts 
due  to  the  lirni,  must  he  ]>rote(!te(l  and  disp(He(l  of 
foi'  the  beiK'lit  of  the  creditors  of  the  linn,  or  of  I  he 
partners  jointly.  \Vher(^  there  is  a  dissolution  of 
jiartnershi))  in  fln^  business  of  pid)lishin<i,-  a  news 
paper,  and  the  whole  title  to  the  i)aper  is  owned  by 
one  of  the  partnc^rs  or  a  purchaser  under  the  lirni, 
the  court  has  no  ri^ht,  in  the  absence  of  any  cove 
nant  or  restriction  on  the  subject,  to  i(»straiii  or 
interdict  the  establishment,  by  the  i)artn(M',  of 
another  paper  devoted  to  the  same  objects,  [)ro 
vided  the  latter  paper  is  sulliciently  distinguished 
from  the  former  to  ])revent  thedocti'incjof  ])iiacy  of 
trademarks  from  applyini*;.  ISoS),  iV.  Y.  l^upcrior 
CI.  i>i.  r.,  Dayton  i\  \Vilkes,  17  How.  Pr.  olO. 

§  700.  Where  it  a])peare(l  that  the  defendants, 
in  having  ccmnected  themselves  with  the  ])laintin's 
in  the  business  of  manufacturiiiij:,  advertising  and 
selling  pills  by  a  particular  name,  or  designation, 
and  having  induced  the  plaintiffs  to  expend  large 
sums  of  money  in  advertising,  &(;.,  the  ])ills  so 
manufactured  and  then  suddenlv  and  without 
notice,  in  an  unjnstiliable  manner,  and  apparently 
from  improi^er  motives,  severed  their  connection 
with  the  plaintiffs  and  set  up  the  same  busini^ss  for 
themselves:  Held,  that  an  injunction  should  be 
granted,  restraining  the  defendants  from  using  the 
name  or  designation  ("Dr.  Morse's  Indian  Root 
Pills")  used  by  the  plaintiffs,  in  designating,  mark- 


P.\UTNKiisnn'. 


275 


r  'If 


i 


in^,  labellrifif,  advcrtisiiii^  or  scllin^^  I  ho  pills  luanii- 
fachiiod  by  llic  ]>l!iiiitiirs ;  iiiid  also  icstiaiiiin.u;  the 
(l(>r(Mi(laiils  IVoni  iisini^  cither  of  tlic  lalx'ls  oi*  tiinh^- 
inaiks  ol'  th«>  ])laliit ill's,  or  siny  other  labels  or  Irade- 
iiiaiUs  made  so  siiiiilai*  b>  (he  plaiiitlU's'  as  would 
be  calculated  to  de(M!iv(^  th(i  public.  ISfJO,  JV.  V. 
^iij>reinc  i'l.  S.  7\,  Coinstock  f\  White,  US  //o/r,. 
Pr.  421. 

^  71)1.  Tile  supreuici  judicial  (rourt  of  Afassachu- 
s<'tts  lias  Tio  power  to  enjoin  the  us(M)r  a  tiaxh;- 
iiitiik  wlucli  consists  in  ])art  of  llie  nain(!  of  one 
with  wJKUU  some  of  the  defendants  weie  formerly 
associated  as  partners,  and  whii^h  was  invented, 
adopted  and  used  by  tlnmi  durin;^-  his  lif<'lim<;, 
Avithout  objection  on  Ins  part,  and  has  been  us(mI  by 
them  ever  since;  buton  the  appli<^ation  of  his  exec- 
utors, the  court  lias  power,  un(h!r  Gen.  Sis.  c. 
rA),  ^  4,  to  restrain  the  use  of  Ids  name  in  their  busi- 
ness and  iirm  without  liavinii^  obtained  his  writt(;n 
consent  in  Ins  lifetime,  or  that  of  Ins  excH^utors 
since  his  d<ndh,  altliougli  such  use  has  continued 
for  more  than  six  years.  18(51,  Mdns.  Hup.  Jud. 
(//.,  Bowman  «.  Floyd,  W  Allen  {Mass.)  70. 

^  792,  A  receipt  given  by  executors  for  money 
due  and  paid  to  the  estate  C)f  a  deceased  person 
from  former  partners,  in  which  the  latter  iiro,  men- 
tion(Hl  by  tlie  name  of  the  former  partnership, 
under  winch  they  continued  to  carry  on  busin(;ss. 
will  not  be  construed  as  a  written  consent  to  the 
continued  use  of  the  name  of  the  deceased  in  the 
new  business  and  firm.     I  Old. 

§  793.  Partnershij)  proi)erty  includes  the  good 
will  of  the  business  and  the  right  to  use  the  trade- 
mark ;  and  on  the  purchase  by  a  surviving  j)nrtner 
from  the  executors  of  a  deceased  partner  of  the 


■ 

f 

1 

I; 
i> 

I 


-I 


270 


Pautneksiiip. 


parfncrsliii)  .stock  iif  Ji  valuntion,  tho  vnliio  of  Mi(> 
<ifOO(l  will  •Mul  the  tindciiiiiik  must  bo  ImUcii  into 
ac(!ouiit.  1S(>:},  PuJ'ort'  Lord  Vli.  W(.slhiirf/  on 
c^i, )(■:',  I!:il]  .-.  niu'i'ow.;,  ',V.\  Lair  .lour.  II.  U'V.  **>'.) 
(Vi.  204;  S.  ('.,  1)  Linr  T.  K^X.  K)  r^'A  ;  S.  C,  I -J 
\V(H-/f/  IL  \V2-2  ;  S.  (\,  10  Jiirisl  {I\\  K)  iM  ;  wvrvs- 
in-;  S.V.,  0  .///ri.s-/  (X  X.)  48:5;  S.  0.,  11  llVr/-/./ 
y/.  Cy2r>  ;  S.  (\,  S  /yr^//«  7V///r.s'  ( .V.  .S'.)  227  ;  S.  ().,  'k 
Law  ./.   /<».  (X  S.)  ('/,.  :)4S  ;  S.  (,'.,  1  N.  U.  MW. 

^  71)4.  Ijy  ai'ticU's  of  copnitnoiship  it  was  ])ro- 
vidcd,  that  if  eillici-  of  the  partiKU's  wiiould  die 
bof()i(^  llm  cxpindioii  of  tlu?  (loiKirtiuM'sliip,  tlie  siu- 
vi villi;'  [»artner  sliould  have  tlu;  option  of  takint?  to 
himself  all  the  stock  helon^iiiii;  thereto  on  paying 
to  (he  executors  of  the  party  dying,  th(;  valine  of 
his  sliai(\  The  ilim  weie  in  the  habit  of  n.nng  as  a 
trademark  the  initial  hitters  of  tlie  names  of  the 
oi'iginnl  miinufacturers  of  the  articles  sold  ;  but  Ihe 
imirk  h:id  ceased  to  be  a  re[)resentation  that  tlie  ar- 
ticles on  which  it  was  impressed  were  the  mnnufac- 
ture  of  (he  persons  whose  initials  it  bore,  and  had 
come  to  be  a  mere  bi'jind,  denoting  (fx(^  (juality  of 
the  Jirticles.  Jlcld^  reversing  the  decision  of  the 
MastcM'of  the  Rolls,  thnt  the  exclusive  right  to  the 
trademark  behmged  to  the  partnership  as  piirt  of  its 
j)roi>eity,  and  must  be  included  in  the  valuation. 
/hid. 

%  7!!.").  Tpon  the  formntion  of  a  partnership  with 
a  peison  entitled  to  (he  beiK^lit  of  a  ti'adc^marl;,  in 
the  absence  of  exi)ress  provision  in  rehition  to  it,  it 
becomes  an  asset  of  the  partnership.  18154,  Ch.  (U. 
of  ApiK':tl,  Bury  o.  Bedford,  10  Jicri.sl  {X.  A)  5015  ; 
S.  C,  ;j;J  Law  Jonr.  U.  \X.  R)  Ch.  405;  S.  C,  1:2 
WeeJdf/  II.  720  ;  S.  C,  10  Law  Times  {X.  IS.)  470  ; 
S.  C  4  X.  n.  181)  :  reversing  S.  C,  11    Wcddy  li. 


-I' 


m 


Pai:tni:i:siiip 


277 


07:$;  S.  C,  8  Law    7V///r.v  (.V.    S.)  S17:  S.    ( 


;{2 


Law  Jour.  It  {N.  S.)  r//.  711  ;  S.  ('.,  1)  Jnr/.s/  (JV. 

s.)i)r)(\;  s.  c,  I  X  A\  r.. 

^  7!)(!.  rpo!!  tlic  (l('('!';ist'  (if  one  piil'tlKM'.  a  (!(»- 
crcc!  wjis  iiindc  I'oi*  (lie  sale  of  ili<>  l)iisiii<>ss  as  m  ^o- 
]i\<i;  ('(»ii<'<'ni,  and  if  was  jtiKjioscd  to  sell  to  any  juif- 
cliascr  "  the  ri,u,!if  to  hold  liiaiscH'  out  as  the  siicccs- 


so 


r  ol'  tlu!  iii'iu  of  Saimicl  ,I(tlmson  t\:  Sons. 


tliat  tlM^  particulars  of  the  sale  ontilit  t(»  cNplain 
that  th<>  sMi-vivinu;  jtartncr,  William  .lohiison.  had 
still  a  rii>hr  to  curry  on  the  same  hnsiiios  in  llic 
satne  town  in  his  own  name.  On  appeal,  it  was 
//('/tf  that  tlie  words  ''with  the  exclusive  li^ht  in 
the  [)n!'chaser  to  hold  himsell'  out  as  llie   snc'cessor 


to  the  said  linn  of  S.  .lohnson  «N:  Sons."   slion 
striclsen  out,  and   these  words   added:   "'\ 


Id  I) 


lie    sal(^ 

will  u'ive  to  the  purchaser  holli  the  prcmiscv-;  in 
wliich  the  business  lias  hwm  carried  on  and  the  bcn- 
eiit  to  be  derived  from  tli(»  habits  of  the  <'nstom"rs 
resortiui;'  to  such  pi-emises,  but  it  will  not  prevent 
any  of  the  ])ersons  liei-ctofore  intei't'sted  in  I  he  Ixis- 
iness,  or  those  w!iomay  i'e[)resent  them,  fromcarry- 
ini;'  on  the  like  business."  18(54,  AVv/Av  Courl, 
Johnson  /'.  TIelh'ly,  \\\  Brm\  ():{  ;  S.  ('.,  on  api)eal, 


2  l)e  <}(%v.  ./.  cl- 


440 


^707.  On  the  dissolution  of  a  partnershij)  each 
])aitnei'  is,  in  tin*  absence  of  any  special  aui-eement, 
entitled  to  trath-i  under  the  name  or  style  of  the  old 


linn.     ISC)."),    Rolh    (UmrL     lianks 


(ribson,    :M 


ll((i\  nOd;  S.  C,    i;J    Wrrhhj  R.    lOl-i;  S.  C,  IH 
Law  .L  U.  (X  .v.)  i'li.  :^\V2. 

%  798.  The  plaintilFs  husl)and,  B,  and  the  de- 
fendant for  nrany  years  carried  on  business  under 
the  style  of  B  &  Co.  The  plaintilf,  on  the  death  of 
her  husband,  continued  the  partnei'shij)  in  pwrsu 


\  i\ 


27S 


Partnership. 


M 


ance  of  a  proviso  in  the  articles  of  partnership.  Tlie 
])hiintiff  and  defendant  afterwards  dissolved  part- 
nership by  nintnal  consent,  and  no  stipulation  was 
made  with  respect  to  the  nse  of  the  name  of  the 
firm.  The  defendant  continued  to  trade  under  tiie 
style  of  B  &  Co.,  while  the  plaintiff  traded  in  her 
own  name,  B.  There  was  evidence  to  show  that 
customers  of  the  plaintiff  had  been  deceived  by  tlie 
use  of  the  name  of  the  old  firm,  and  had  sent  to  the 
defendant  orders  intended  for  the  plaintiff  ;  but 
there  was  no  evidence  of  fraud  on  the  part  of  the 
defendant.  I/eld,  that  the  plaintiff  was  not  enti- 
tled to  an  injunction  to  restrain  the  defendant  from 
trading  as  B  &  Co.     Ibid. 

§  799.  A  partnership  deed  witnessed  that  the 
lands,  mills,  and  machinery,  which  theretoiore  had 
belonged  exclusively  to  M  (one  partner)  should  re- 
main his  sole  property,  subject  during  the  partner- 
ship to  be  used  for  all  partnership  purposes  ;  and 
l)rovided  that  the  retiring  j^artners  should,  at  the 
end  of  the  partnership,  be  paid,  by  M's  promissoiy 
notes,  the  value  of  their  respective  shares  in  the 
partnership  stock  and  capital.  No  mention  was 
made  therein  of  the  good  will,  name  of  the  firm,  or 
trademarks.  After  eight  years  the  partnership  was 
dissolved.  The  outgoing  partners  insisted  that  M 
should  pay  them  for  the  name,  good  will,  and 
trademarks,  at  a  valuation.  Held,  that  M  was  en- 
titled to  the  name,  &c.,  upon  paying  the  outgoing 
partners  pursuant  to  the  deed  ;  but  without  theii- 
being  separately  valued.  The  petition,  praying  im 
injunction  to  restrain  M  from  using  the  name  &c., 
was  dismissed  with  costs.  Dicks(>n  ti.  M' Master, 
(Affirmed  with  the  court  of  C.  A.,  with  this 
variation,  that  in  taking  the  account,  the  good  will 


W 


)  ■■ 


Partxeiisiiip. 


270 


should  be   valued  separately.)    Gamble's    Index, 
y8;J;  S.  C,  11  /.  Jar.  (xT.  >S\)  202. 

§  800.  R.  Scott  and  the  plaintiff,  W.  Scott, 
carried  on  business  at  N.  and  G.  in  partnership, 
under  the  linn  of  R.  and  \\ .  Scott.  By  an  agiee- 
ment  for  dissolution  it  was  agreed  that  one  of  the 
XJartners  should  remain  at  N.  but  there  was  no 
stipulation  by  which  either  party  bound  himself 
not  to  continue  the  business,  but  only  that  thev 
would  not  carry  it  on  together.  There  was  no  dispo- 
sition of  the  good  will  to  the  partner  who  remained 
at  N.  Neither  party  was  to  use  the  name  of  the 
firm  except  so  far  as  might  be  necessary  in  winding 
up  the  partnership  affairs.  Shortly  after  the  date 
of  the  agreement,  VV.  S(!ott  retired  from  the  busi- 
ness and  set  up  business  for  liin)self  at  T  near  N. 
The  inscription  used  by  the  lirm  over  the  door  of 
their  place  of  business  at  G  had  been  ''  R.  and  \V. 
Scott,  of  N."  R.  Scott  made  over  his  business  at 
N  and  (x  to  the  defendants,  who,  at  their  premises 
at  (i  made  use  of  the  inscription  "Scott  and 
Nixon,  late  R.  and  VV.  Scott,  of  JS."  On  the  appli- 
cation of  the  plaintiff',  the  court  granted  an  injunc- 
tion restraining  them  from  using  such  an  inscrip- 
tion, inasmuch  as  it  amounted  to  a  representation 
that  they  had  succeeded  to  the  business  of  the  late 
lirm.  Held  Jurlker^  that  the  plaintiff'  need  not 
prove  special  damage.  1860,  Vice  Ch.  Wood' a  Cl.^ 
Scott  V.  Scott,  10  L.  T.  R.  (yV.  *V.)  143. 

§  801.  Fay,  J,  R  and  T,  as  copartners,  began 
the  business  of  manufacturing  machinery  at  Wor- 
cester, in  18i)2,  under  the  lirm  name  of  F  k,  Co. ; 
and  Fay,  J,  R  and  C,  as  copartners,  began  a  similar 
business  at  Cincinnati  in  1853,  under  the  same 
lirm  name,  using  it  as  th<!  style  of  the  concern  and 


'  ■  p* 


280 


Partxeksiiip. 


|l     '^'i  ■ 


i      ['i: 


■  'u 


i 

'MP 


as  a  trademark.  Fay  died  in  1854.  Ev.^-  siiio(i  liis 
deatli,  J,  R  ana  C,  copartners,  continiu'd  tlio  busi- 
ness at  Cincinnati  with  ail  the  rig-lits  ai  to  Liie  use 
of  tJiename  of  Fand  Co.,  wliicii  their  iinii  had  orig- 
inally ;  and  J,  11  and  T,  co2)artners,  eoulintied  the 
business  at  Worcester,  under  tlie  name  ol'  F  and 
Co.,  with  the  assent  of  F's  representatives,  until 
18G1,  when  their  lii'm  was  dissolved,  and  its  orders, 
con  espondencf?  and  good  will  were  sold  to  T,  wlio 
thereafter  engaged  in  the  business  of  buying  and 
selling,  but  not  of  manufacturing  machinery. 
llehl^  that  J,  R  and  C,  could  not  maintain  a  bill  in 
equity  to  restrain  T  from  using  the  name  ol'  F  and 
Co.  in  his  business,  and  attaching  it  to  machinery 
which  he  sells  made  by  other  persons  than  him- 
self. 1807,  i^tiprciiie  Jtid'l  CI.  of  Mass.,  Rogers  i). 
'raint(ji,  07  J/^^y.v.  !2UJ. 

5J  802.  One  tradesman  has  no  right  to  us(^  the 
tiademarks  or  names  [)reviously  adopted  and  used 
by  another,  so  as  to  induce  j)nrchasers  to  beiievc, 
contrary  (o  the  fact,  that  they  aie  buying  tiic  ar- 
ticles to  whicii  the  marks  were  originally  ap{)lied. 
Trademarks  are  i)roperty,  and  a  person  using  such 
marks  without  the  sanction  and  authority  ol'  tl.\e 
owner  will  be  restrained  by  Injunction,  even  wheie 
it  do(^s  not  appear  there  was  any  fraudulent  intent 
in  tli(4r  use,  and  will  be  recpuied  tt)  a(!count  for  tht^ 
])rohts  derived  from  the  sale  of  goods  so  marked. 
Accoivlingly,  wliere  the  defendants  8  and  II  had 
become  entitled  by  articles  of  dissolution  of  part- 
nership to  certain  \vrapi)ers  and  labels  belonging  to 
the  late  lirm,  and  had  stipulated  not  to  use  them 
for  any  purpose  except  for  re-wrai)[)ing  medicines 
coming  back  in  bad  order,  and  said  S  and  11  sold 
!<aid  labels  to  the  defendants  C  and  P  in  o:dei'  that 


m 


V    ^'i 


\,p . 


Partxkrsiiip. 


281 


they  nii,<4'lit  be  used  for  medicines  niamira(!tiii(Hl  by 
C  and  P  in  imitation  oT  the  plaintiirs  preparations  : 
IIel(h  that  the  defendants  S,  TI,  C  and  \\  should  lie 
enjoined  and  that  the  plaintilf  sJioiild  be  cotuixMi- 
sated  l>y  liavin^u;  an  account  taken,  1870,  Mf/.  VI.  <>J 
/l/;/-'rf//.v,  Hton(;')reak(M' r.  Stonebi'i-akei'.  WW  Md.  2r<ri. 

vj  SOI).  r]»on  llie  dissolution  of  a  lirai  composed  oL' 
the  phuntilf,  Ed,u,ar  II.  IJeeves,  an<l  tlie  dcfcndanls, 
the  foi'mei",  by  a  written  c(jnveyance,  sold  and 
transferred  to  the  latter,  all  his  interest  in  the  ])art- 
nershi[)  property  and  effects.  Such  ])ro[K'ity  and 
effects  weni  not  describetb  Ifdd,  thai  I  he  ch^fen- 
dants,  l)y  such  conveyance,  did  not  accpui-e  tli(> 
right  to  use  the  iirni  name  of  *'  E.  11.  lleeves  tt  Co.." 
under  which  the  business  of  the  partnei'shi[)  had 
pi'eviously  be(}n  conducted,  as  a,  label  on  their  goods. 
or  to  advertisi.'  themselves  as  the  successors  of  such 
iirm.  1871,  X.  V.  .^i/jwrior  (H.  K  7'.,  Reeves  r. 
Denicke,  12  Ahfj.  Pr.  (X  X.)  t)2  ;  ciiticising  and 
disap})roving  Peterson  i\  Humphrey. 

,4  804.  That  there  may  be  and  is  "properly"  in  a 
nam(>  seems  to  be  conceded,  atid  the  names  ol'  news- 
pa])eis.  hotc^ls  and  places  of  amusement  aic  in- 
stances ol"  this  species  of  propiM'ty.  Such  names 
nray  be  dealt  with  as  pro])erty,  and  are  the  subject 
ol'  sale  and  transfer,  and  are  (»l"ten  of  gj'eat  value. 
Where  the  name  under  which  a   l>usiness  of  aiiv 


!>/'!(  h>i 


It 


nature  is  carried  on,  is  that  of  the  pro^ 
would  lecpure  clear  and  express  woids  of  conxcy- 
ance  to  secnn^  a  transfer  to  a  [)urchaser  of  the  right 
to  continue  the  use  of  such  name,  for  his  cojive- 
nience  or  pi'()lit.  When,  therefoi'e,  tne  i>ame  and 
style  of  a  mercantile  iirm  is  that  of  the  princijial, 
and  most  resi)onsil)le  and  iniluential  mend)er  of  the 
pai'tnership,  the  mere  transfer  of  the  interests  of 


\lll 


,•.«(., 


ms 


'M 


m 


i>  •■  1 


282 


Partnership. 


such  member,  in  the  partnership  property,  will  not 
convey  the  iKirtnership  name  to  the  purchaser,  or 
give  to  him  the  right  to  continue  its  use  against  the 
consent  of  such  person.     Ibid. 

§  80,').  In  the  sense  of  a  very  common  practice  of 
persons  who  have  acquired  the  property  of  an  old 
and  well  established  mercantile  firm,  of  using  the 
term  "successors  to''  such  firm,  there  maybe  an 
assumed  right  to  so  continue  the  use  of  such  hi'm 
name.  But  sucli  common  practice  does  not  give 
the  right.  It  can  be  acquired  only  by  a  grant  from 
the  owner,  and  when  such  grant  has  not  been  made 
there  is  no  succession  to  it.     Ibid. 

§  80G.  It  is  a  very  common  mistake  to  suppose 
that  a  purchaser  of  the  property  of  a  mercantile 
hrm  is  the  "successor"  of  the  linn.  lie  succeeds 
to  the  property,  to  all  that  is  conveyed  to  him,  but 
to  nothing  more ;  and  he  has  no  more  right  to 
describe  himself  as  the  successor  of  such  firm 
because  he  has  purchased  its  property,  than  he  has 
to  designate  himself  the  successor  of  a  manufactur- 
ing companj' from  which  he  had  casually  purchased 
some  goods.     Ibid. 

§  807.  One  Daniel  Simmons,  who,  from  1842, 
had  been  engaged  in  the  business  of  making  axes, 
took  the  plaintiffs  into  partnership  with  him  in 
1848,  under  the  name  of  "D.  Simmons  &  Co." 
which  they  used  on  their  stamps  and  labels.  The 
lirm  continued  until  Simmons's  death  in  1800,  witli- 
out  any  change  in  the  trademark.  In  October,  1801, 
plaint  ill's  made  an  arrangement  with  Jonas  Sim- 
mons, the  legatee  t)f  Daniel  Simmons,  and  with  the 
executors  of  the  latter,  under  which  they  continued 
the  use  of  the  name  "D.  Simmons  &  Co."  as  their 
trademark.     Held,,  that  the  plaintiffs  are  entitled 


iir 


Partxehsiiip. 


283 


to  use  the  trademark  "D.  Simmons  &  Co.,"  and 
that  Jonas  Simmons  did  not  have  (at  least  after 
October,  1861)  any  right  to  use  tliat  name.  1872, 
IV.  Y.  Supreme  Ct.  Circuit,  Weed  c.  Peterson,  12 
Abb.  Pr.  {N.  S.)  178. 

§  808.  On  a  dissolution  of  partnership  between 
S  and  H,  all  the  property  of  the  partnership  was 
bought  by  11,  and  paid  for  on  a  valuation,  but  he 
did  not  pay  for  good  will,  nouiinAiliiu.  S  was  liv- 
ing, and  not  a  bankrupt.  Held,  that  II  was  not 
entitled  to  continue  to  use  the  name  of  S,  in  the 
style  of  the  firm.  1872,  V.  Ch.  Wood's  Ct.,  Scott  v. 
Rowland,  26  Law  Times  R.  ^\  K  391 ;  S.  C,  20 
WeeJdf/  11.  508 

§  809.  A  entered  into  a  copartnership  with  B, 
soon  after  dissolved  it  and  formed  with  C  a  part- 
nership nnder  the  name  of  A  &  Company.  Two 
years  afterwards  A  died,  and  his  administrator 
conveyed  to  B  the  right  to  use  A's  name  in  his 
business.  Held,  that  the  administrator  and  B 
might  join  in  a  bill  in  equity  under  the  Gen.  Sts.  c. 
56,  §  3,  to  restrain  C  from  continuing  to  do  business 
under  the  name  of  A  &  Company.  1872,  Mass. 
Sup.  Jud'l  Ct.,  Morse  v.  Hall,  109  Mass.  409. 

§  810.  A  trader,  who  has  been  a  manager  or  a 
partner  in  a  firm  of  established  reputation,  has  a 
right,  on  setting  up  an  independent  business,  to  make 
known  to  the  public  that  he  has  been  with  that  fu'm  ; 
but  he  must  take  care  not  to  do  so  in  a  way  calcu- 
lated  to  lead  the  i)ublic  to  believe  that  he  is  carrying 
on  the  business  of  the  old  iirm,  or  is  in  any  way  con- 
nected with  it.  1872,  Ch.  Ct.  of  Appeal,  L.  J.  ./., 
llookham  v.  Pottage,  L.  11.  8  Ch.  91 ;  S.  C,  27  L.  T. 
R.  {N.  S.)  rm  ;  S.  C,  21  W.  R.  47;  affirming  S.  C, 
20  L.  T.  (iY.  S.)  755,  and  S.  C,  20  IF.  i?.  720. 


}    ■    .     ^!i- 


8«  ,<,''•■ 


■  U  'S 


284 


PAUTNEIiSillP. 


»!' 


!  ^/, 


<^  cSll.  TIk;  plaiutifF.  an  old  (3sLiiblishod  tailor, 
t<)o!v  (he  (Icl'oiidaiil,  wlio  had  been  liis  rorciiniin, 
inio  partiicishi]),  and  llic  business  was  eairicd  on 
under  I  lie  name  oi'  II  ct  P.  The  partnersliip  was 
al'terwai'ds  dissolved  bv  u  decree  of  the  court,  in 
wliicli  it  was  provided  liiat  the  busiue-;s  of  the  part- 
nersjiip  shoidd  beloufj,' to  tho  i)laiuti[f.  The  plain- 
till'  accordingly  kei»t  up  tlie  shop  under  the  nani<; 
of  II  '^  Co.  iSubsecjuenrly  the  del'tnidant  set  up  u 
;-h('  >  '  V  a  few  doors  I't'om  the  plaintiifs  shop,  and 
pni  ;  '  ■{  ^  "i"  tho  door  the  woids  "P,  I'roni  II  &  P." 
Ild'd  (,al;iiming  the  doCi'ee  of  Mai  inn,  V.  C).  that 
liaving  r(\gai'l  U)  the  niann<4'  in  which  the  names 
were  p.'nte,!  up,  tli<i  defendant  had  done  that 
vvhicli  was  caK'idalod  to  lead  the  j)ublic  to  suppose 
that  lie  was  still  connected  witli  tlie  old  tirm,  and 
that  the  plaintiif  was  entitled  to  an  injunction. 
J  hid. 

§  812.  William  P.  Winchester,  was,  in  1817, 
the  surviving  member  of  the  lii-ni  of  "  E.  A.  and 
W.  Winchester,"  which  established  a  soaj)  manu- 
factorv  in  C  in  1821,  and  used  the  iirm  name  as  a 
trademark.  In  that  year  said  Winchester  TornKid 
a  partnership  with  the  defendant  for  the  purpose, 
as  the  articles  stated,  ''of  continuing  the  business 
in  the  same  name  and  style  of  the  late  iirm."  'J'he 
articles  provided  that  William  P.  Winchester 
might  dissolve  the  partnership  at  any  time  (in 
which  case  the  defeudanl  shonid  have  no  claim  ex- 
cei)t  for  his  share  of  accrued  prolitsi,  and  might  by 
his  will  give  the  i-ighf  to  his  relatives  to  become 
members  of  the  liim,  which  should  be  continiu'd 
under  the  same  nuuK!.  William  P.  Winchester 
died  in  ISaO,  aiul  bv  his  will  directed  that  his 
trustees  should  allow  the  Iirm  of  ''E.  A.  and  W. 


IS 

I: 


Partxeusiitp. 


285 


Winchostor.**  if  flio  (li'fciidinit  slioiil-l  bfi  a  mem- 
ber tliei'por,  to  oontiniK!  in  possession  of  the  testa- 
tor'.s  liuid  ;it  a  cerlaiii  i'<Mit.  nml,  if  desired,  to  l)or- 
row  sloo.OOO  from  his  jxTsoii.-ii  (^si:;t(>.  if  not  needed 
foi-  j);tyment  of  hcijncsrs,  unless  nil  liis  fi'ustees 
(one  of  ^vliom  should  Mhwiys  he  ;i  mrMiibci'  of  tlie 
iirni)  sliould  de(>ni  if  projH>r  to  withdrnw  sneli  real 
jind  personnl  propei'ty  ;  and  he  nnmed  tli(>  plnin- 
tiifs  and  the  defendant  exeeutoi's  and  tiiistcnvs. 
The  def(Mi(huit  continncd  thi^  business  under  the 
same  name,  lirst  alone  and  then  with  i)artners, 
usinii;  the  firm  name  as  a  trademark,  until  K^'O?, 
when  the  partnershij)  was  dissolved.  In  18(iS,  the 
executors  and  trustees  sold  tin*  manufactory  with 
the  fixtures  and  utensils  to  L.  //r/r/,  that  the 
plaintilTs  c.ould  not  maintain  a  bill  in  ecpiily  to  re- 
strain the  defen(hnit  f  om  usinu'  th(^  name  "  E.  A. 
and  \V.  Winehestei',"  as  a  trademark,  and  to  eom- 
])el  him  to  join  in  an  a£2:ieement  to  transfer  to  L 
the  I'i^ht  to  us(-  it.  187-J,  S//j).  .}u(TL  CV.  A/rfss., 
Sohiei' r.  Johnson.   Ill  .V'/.v.v.  2:38. 

^  81o.  When  a  lirm  under  a  e(mtraet  with  the 
ownei-  has  the  right  to  the  exclusive  vise  of  a  ti'ade- 
mai'k,  and  during  the  partnership  one  of  the  iirm 
enters  into  an  agreement  with  tlu^  owner,  Avhereby 
the  previous  contract  is  canceled  and  a  new  one 
matle,  giving  to  such  member  the  exclusiv(^  use  of 
the  trademai'k  for  a  certain  number  of  years,  (m 
(!ertain  conditions,  and  at  the  end  of  that  tiu-m,  the 
conditions  having  been  performed,  the  sole  and  ex- 
clusive right  and  title  to  the  traxh^mark:  ILlfl,  that 
uich  [)artnertook  and  held  the  contract,  and  all  the 
rights  and  interests  given  thereby,  as  trustee  for 
th(^  firm.  AVhen  one  ])artner,  during  the  partner- 
ship, negotiates  respecting,  and  obtains  the  exchi- 


;Vr-i 


^^1 


I, 


'X 

■ 

m 


I'-  ■ 

I? 


286 


Paktnp:rsiiip. 


'I' 


I 
'A- 


I 


sive  use  of  a  right  in  vvhicli  the  lirm  was  interested, 
lie  will  be  declared  to  hold  such  use  in  trust  for  the 
lirm.  IcS^n,  N.  Y.  Superior  Ct.  G.  T.,  Weston  w. 
Ketcliani,  ;39  N.  Y.  Super /or  Ct.  54 ;  and  see  S.  C, 
01  IIow.  Pr.  45{). 

^  814.  In  the  trademark  case  last  above  put,  the 
other  partners,  after  knowledge  of  the  contract  made 
by  their  copartner,  expressed  their  disapprobation, 
but  did  not  immediately  resort  to  their  legal  rem- 
edy, tind  notwithstanding  the  act  of  their  copartner 
still  continued  the  firm,  and  in  its  business  used  the 
trademark,  and  manufactured  under  it  as  before, 
and  paid  to  the  owners  out  of  the  firm's  funds  the 
sums  stipulated  to  be  paid ;  yet  it  appearing  that 
the  copartner  who  procured  the  contract  for  his  own 
benefit  alone  knew  the  secret  of  the  maiiufacture, 
Held,  a  forced  acquiescence,  which  would  not  sustain 
a  finding  of  ratification.  If  they  had  moved  in  the 
matter  adversely,  they  would,  in  asserting  their 
remedy,  not  have  possessed  the  knowledge  by  the 
use  of  Avhich  the  capital  employed  in  the  manufac- 
ture (all  of  which  was  contributed  by  them)  might 
be  made  remunerative.     Ibid. 

§  815.  Although  in  the  case  last  above  put  the 
defendant  does  not  know  the  secret  of  the  manu- 
facture, and  was  selling  under  the  trademark  an 
article  different  from  that  represented  by  it,  yet 
(whatever  may  be  the  effect  of  these  elements  in 
other  cases)  no  cause  of  action  arises  therefrom 
against  him  in  favor  of  one  who  has  no  more  right 
to  the  trademark  than  he  has.     Ibid. 

%  810.  Defendant,  survivor  of  the  firm  of  Phelan 
«&  Collender,  on  decease  of  his  partner,  purchased  of 
his  executors  all  the  trademarks  and  the  business 
of  the  old  firm  ;  he  continued  the  business,  describ- 


Partnership, 


287 


ing  himself  as  "11.  W.  Collondoi-,  sucoossor  to  Phelan 
&  Collender,"  and  describing  his  billiai-d  tal)l«»s  as 
"Phelan  &  Collender' s  Standard  AnKM'ican  Tables." 
Plaintiff,  a  son  of  said  deceased,  was  ennagc^d  in  the 
same  bnsinoss,  and  alk\i?ed  that  defendant  by  use  of 
the  words  "successor  to  Phelan  &  Collender"  and 
said  description  on  billiard  tables,  was  injuriuijj  his 
business  by  inducing  customers  of  the  hite  lirm,  who 
would  otherwise  have  dealt  with  plaintilf,  but  who 
had  been  misled  by  the  use  of  such  name,  to  deal  in 
billiard  tables  with  defendant.  Ileld^  that  i)lain- 
tiff' s  right  of  action  did  not  rest  on  his  relation 
ship  to  his  deceased  father,  nor  upon  any  right  or 
interest  in  the  concerns  of  the  late  iirm,  but  solely 
on  the  ground  that  his  name  was  Phelan,  and  that 
he  was  engaged  in  the  business  of  manufacturing 
and  selling  billiard  tables,  and  that  his  l)usiness 
was  injured  by  the  use  of  that  name  by  defendant, 
in  connection  with  his  business  :  that  anv  other 
Phelan,  who  happened  to  be  in  the  same  business, 
would  have  the  same  legal  right  to  enjoin  the  use  of 
the  na.me  by  defendant,  and  could  maintain  an 
action  for  that  purpose  if  i)laintiflP  could  do  so  ;  and 
that,  as  he  did  not  allege  that  the  defendant  had 
used  the  name  Phelan  in  such  a  way  as  to  make 
it  appear  to  be  that  of  plaintiif  himself,  or  had  re- 
sorted to  other  artilice,  to  induce  the  belief  that  the 
establishment  of  defendant  was  the  same  as  that  of 
plaintiff,  or  to  mislead  customers  to  purchase  of  him 
imder  the  belief  that  they  were  buying  of  plaintiff, 
or  were  buying  articles  of  lolaintilfs  manufacture, 
he  was  not  entitled  to  any  injunction.  1875,  N.  Y. 
Supreme  Ct.  Q.  T.,  Phelan  /;.  Collender,  0  Ihrn,  244. 
§  817.  A,  C  &  Co.  being  the  successors  by  pur- 
chase of  Stillman   &  Co.,  woolen   manufacturers, 


If  ' 


i 


..I  I— 


;  'U} 


Iw: 


288 


PAnrxKiisiiip  Name— Patent. 


oontinuod  to  nso  *'  Still  man  ».*i:  Co.""  as  a  ( i  adomark 
on  llieii'  tickot  for  f^'oods.  Lali'Mcv,  Slillnian,  &  Co. 
the  le.s.s(M»s  ol*  a  mill  foi-nici'ly  iiscfl  by  Slilhnan  & 
Co.,  known  bolli  as  the  "Stillniau  Mill,"  and  as 
tli(3  "S(n-«Mith  Day  Mill,""  also  used  "Slilhnan  A:. 
Co."  as  a  tiadciiiai'k.  On  a  petition  for  injunction, 
l)i'()U<j;lit  by  A,  C  &  Co.,  a,i2;ainst  L;itiinor,  Slillnian, 
&(-<).,  to  piovcnt  their  so  iisiny,'  tlio  words  "Still- 
man  A:  (^o.,"  it  a ppea ri nti'  that  no  d(H'ei»tion  conld  be 
(^harn'c  I  on  ciilKM'  (;onii)lainaiits  or  respondents,  and 
that  no  ])eis()n  ol*  tln^  old  lirm  ol'  Stillman  &  Co., 
was  a  member  of  tin?  Jinn  ol  A,  C  A:  Co.  Jhld, 
that  lh<>  injunction  conld  not  l)e  granted.  J/rlr/, 
Curtlier,  that  a  mannl'actnier  has  llHM'ight  to  label 
his  goods  with  his  own  name  or  that  of  his  mill,  if 
no  I'i'auduleiit  i)urpose  is  int(Mid<>d.  1870,  S/f/jrr//ie 
Of.  of  II.  /.,  Carmichael  i\  Latimer,  uiu-epcnted. 

j^  818.  Query.  If  the  English  practk'e  of  retain- 
ing a  hrni  name,  when  no  original  partner  remains, 
is  generally  recognized  in  Ameiican  law  %    Ibid. 

See  nlso  §§  614,  767,  870. 


PARTNERSHIP  NAME. 


See  Partnership. 


PATENT. 

As  to  the  nse  of  the  word  "Patent,"  see  Mis- 
rep  uksknt  a  tion. 


Patkxtee  (Xamk  of)— PLi:ADiNrj.         i?SO 


HI 


As  to  the  right  to  use  the  name  of  a  pntentee, 
see  Patextkp:  (Name  of). 

See  also  §§  4,  32,  510. 


PATENTEE— NAME  OF. 


.•■.  i\ 


•Ii^ 


See  Na:\[e. 


PERIODICALS. 


See  PUBLICATIOT^S. 


PLAYS. 

See  Publications. 


PLEADING. 


IS- 


§  820.  D,  the  inventor  of  a  medicine,  employed 
P,  a  foreigner,  residing  abroad,  to  manufacture  it 
for  him  tliere,  and  D  sold  it  in  England  f(n'  liis 
own  sole.prolit.  A  label  and  seal  denoting  that  tlie 
medicine  was  manufactured  by  P  and  sold  l)v  D, 
were  affixed  to  each  of  the  bottles  in  wliich  it  v;as 
sold.  The  defendants  imitated  the  labels  and  seals, 
and  D  &  P  liled  a  bill  for  an  injunction  and  an  ac- 
count. Demurrer  allowed  on  the  ground  that  it 
did  not  appear  that  P  had  any  interest  in  the  labels 
and  seals — the  parties  asking  joint  relief,  not  being 
entitled  to  joint  relief.  1828,  Jliffh  Ct.  of  Chan- 
ctry,  Delondre  v.  Shaw,  2  Sim.  237. 

19 


m 


,'5. 


200 


pLKADrxr,. 


:|i 


^  8-Jl.  Tlio  di'diiration,  ni'tor  sratinii:  tluit  tlio 
plaiiitill's  ])ivj)nr('(l,  vended  and  sold.  J'or  piofit,  ti 
CPi-fain  medicines  called  ''Morrison's  Univei'std  Med 
icine."'  wliicli  lliey  wei'c  accisloim'd  lo  sell  in  lio\( 
^vl•apl)ed  n^)  in  [)ai)(M',  avIucI)  had  tlio;-<'  woi-ds 
printed  Miereon,  alle^-ed  that  (lie  dcreiidanl.  intend- 
in.ii:  to  injure  tlie  j)laintill's  in  the  sah'  of  lh<'ir  said 
nie<li('ines,  deeeitl'nlly  and  I'randulenlly  piepared 
iiiedit'ines  in  imitation  ol"  the  nietli<'ines  so  pit'iiaivd 
by  the  ])hunfl!i's.  and  wrajtped  np  tlio  same  in  pa- 
l)er,  witii  the  words  "Morrison's  l'ni\t'isal  Medi- 
cine"'' printed  thereon,  in  order  to  denote  ihat  siirji 
medicine  was  the  ^ennin(^  medicine  pr<^paied  and 
sohl  l)y  the  ])]ainti(t's  ;  and  that  the  (U^fendant  de- 
ceitl'ully  and  L'nmdnlently  vemh'd  and  soM.  I'oi-  his 
own  lucre  and  gain,  (he  hist  nieiiti(med  boxes  ol"  th 
said  articles,  i-epi'esonted  by  him  to  be  medicines 
the  name  and  (h^scription  ol'  "Moi-rison's  I'niversai 
Ab'dicine  "  Avidcli  had  been  pre^^ared  and  sohl  by 
the  plaintiil's  ;  whereas,  in  truth,  the  plaintill's  ]«ad 
not  been  tlie  pi-epareis,  &c.,  thereoi'.  /AVr/,  on  a 
motion  to  an-est  the  judgment,  tliat  the  (hn-laration 
disclosed  a  snthcient  cause  of  acticm.  A'ei'd^ct  I'or 
I)laintitt' sustained,  1841,  CI.  of  iknii.  Picas,  Mor- 
rison  r.  Salmon,  2  2Ian.  <l*  Gr.  HS."). 

^  822,  In  actions  on  tlie  case  in  trademark 
cases,  it  is  enough, — at  least  ai'ter  verdict — to  al- 
ly"^i^  generally,  that,  by  means  oi'  the  premises,  tlie 
p!;;intiir  was  deprived  of  the  sale  of  divers  large 
q;;antiries  of  goods,  and  lost  the  prohts  that  would 
(tlierwise  have  accrued  to  him  therefiom.  1847, 
llodgers  r..  Nowill,  11  Jnrlst,  1037  ;  S.  C,  T)  (/.  B. 
{Man.  Or.  &  h'c.)  109  ;  S.  C,  17  L.  J.  R.  (iV.  .S^)  6'. 
P.  m  ;  S.  C,  0  Hare,  825. 

§  823.     \.  declaration  stated    that   the  plaintilf 


Pleaiuxg. 


201 


]r,,(\  rstfff/Jis//iff  ;i  hinik  in  London  oallrd  "The 
Uiiiik  of  London/'  :ind  wiislln'  liisf  ixTson  who 
li;i({  ('si;d>lislifd  ;i  hank  by  or  niuhn'  Mint  name,  and 
had  ('stublNlh'd  thf'  said  hank  af  ^^^rcaf  ('V]>(Mis(s  and 
caused  the  name  to  I'e  }>nl)lislied  and  aiiixed  on  the 
otiices  oT  t!ie  said  haidv  so  that  the  same  miiiht  be 
seen  and  InIkkvii  by  the  pid'He.  and  had  (•anse<l 
])rosjtectnses  of  tlie  said  i)anlv  to  be  pi'inte*!  an<l 
cii'cnhited  with  tlie  said  name  a)id  title  (»r  '"The 
l*/ank  ol'  liondon"  tliereon,  and  the  sai<l  l«ndv  was 
then  coinnioidy  known  l)y  the  name  of,  and  was 
tlie  only  bank  named  or  styled,  "The  I'aidv  of 
London,"  whereby  the  i>laintiir  //<tff  ncqulnd  a  ml 
Wff.s  ficfiidriixj  rireaf  fjahi.s  (ni<l  projils.  It  then 
l)roeee(h'd  to  alieii^e  that  the  del'iMidants,  intendi!5^' 
to  injure  lite  p/aiiifijr  'it  ///.s'  said  Ixnik  diid  Ihf 
fidid  h/r.s'i/ir-sft  n/'  //is  siild.  hniih\  afterwards,  and 
while  his  said  bank  was  the  only  bank  named  or 
srvled  "The  jJaidv  of  London,"'  wron^fidlv  and 
fraudulently  estaldisjied  a  certain  other  bank  in 
liondcni,  nnder  the  name,  style  and  title  of  "The 
Bank  of  London''  in  imitalion  of,  (iiid  aareprcscht' 
iiKj^  (In-  ^(fi//  lidulc  of  Loudon,  of  ike  plain rill\  and 
wronii'fullv  and  fniudulentlv  transacted  business 
at  the  said  ))ank  s<»  <'stablishe(l  bv  the  defendants 
under  the  sai<l  name,  and  under  the  false  color  and 
pretense,  that  the  same  was  the  bank  established 
by  the  idnintilT  :  and  that  thereby  the  plaintilf  had 
been  prevented  from  cai'ryiniz;  on  his  business  at 
the  sai<l  bank  so  established  by  him,  so  fully  and 
extensively  as  he  would  otherwise  luive  d(me,  and 
had.  luoi  deprircd  of  profits^  and  that  by  means  of 
the  premises,  divers  i)ersons  were  induced  to  believe 
and  did  believe  that  the  bank  so  established  1)V  the 
defendants  v'^«  the  bank   (tailed    ''The   Bank   of 


J! 


', 

%: 

i 
1 

292 


Pleading. 


i:    'M 


m 


i 


■)■  '.- 


'  it  . 


London"  established  by  the  plaintiff,  IMd,  that 
the  de(;laration  disclosed  no  cause  of  action,  it  not 
beini?  averred  that  the  plaintilf  liad  ever  carried  on 
the  luisiness  of  a  oankqr.  1850,  CL  of  Com.  PIca.s\ 
Lawson  ?\  Bank  of  London,  18  Common  BeneJi^ 
84. 

^  824.  Where  the  complaint  set  np  that  the 
l^laintiilfs  and  defendant  entered  into  an  agreement 
whei'eby  the  former  agreed  to  sell  and  did  sell  to 
the:  latter  twenty  thousand  empty  papers  or  bags 
for  seeds  with  the  plaintiffs'  label  thereoii,  and  two 
thousand  bags  of  seeds  with  the  plaintiffs'  label 
thereon,  for  the  sura  of  9,^)2.21 ;  that  the  defendant 
agreed  to  pay  said  sum  and  to  till  said  empty  ])ags 
with  seeds  of  good  quality  and  sell  or  dispose  of 
them  so  tilled  and  the  bags  of  seed  purchased  of 
the  i>laintiil's,  with  their  labels  on  the  same,  in 
Dutchess  County,  Xew  York,  and  nowhere  else  ; 
and  that  the  plaintiff  fuliilled  their  part  of  said 
agreement,  but  that  tlie  d'^fendant,  wrongfully  in- 
tending to  injure  tlie  plaintiffs  in  their  business 
and  rei)atation  as  seedsmen,  tilled  said  empty  s(^ed 
bags  witli  seeds  of  a  poor  (piality  and  sold  oi'  dis- 
posed of  them,  together  with  the  said  bags  of  seeds 
sold  to  him  by  the  plaintiffs,  at  divers  other  places 
than  in  said  Dutchess  County,  l)v  reascm  of  which 
premises  the  plaintiff's  had  suffered  damages  to  the 
extent  of  >^*i(K).  Ilrld,  that  the  contract  for  sale  of 
said  empty  bags  with  the  plaintillV  labels  thereon, 
for  the  purposes  a  foresaid,  was  against  public  policy 
and  void,  and  that — as  the  considemtion  is  entire — 
a  demurrer  to  said  complaint  was  well  taken. 
]S.-)7,  X.  Y.  Supreme  CL,  G.  T.,  Bloss  v.  Bloomer, 
23  Barb.  004. 

^  82.").     In  an  action    on   the    case,  where    the 


"w 


PLEADINa. 


295) 


cleclaration  allei^'ecl  in  .substance  that  the  defendant, 
well  knowing  the  plaintiffs'  trade  nuirk  "•llouvr 
Williams  Lon.ii;  Clotii/'  and  tor  the  pur[)<)se  and 
with  the  ellect  of  de(^eitfiilly  passing'  oif  his  own 
goods  for  tliose  of  the  plaintiffs,  did  stain [)  the 
words  "  lloger  Williams''  npon  cotton  clorh  not 
raanufactiii'ed  by  the  plaintiif,  and  to  his  st'i'ious 
injury:  /Ir/f?^  that  undnr  the  rule  that  a  ]).u'tial 
imitation  of  a  trademark,  if  calculated  to  (Icceivc. 
will  support  an  action,  this  is  a  suliicient  aUcgiitiou 
of  an  invasion  of  the  plaintiffs'  rights.  bSOo. 
><upreiiie  (Jt.  of  li.  /.,  Barrows  «.  Knight,  0  li. 
/.  434. 

>^  820.  A  declaration  alleged  that  the  phiintiff 
was  employed  by  the  defendant  to  make  certain 
articles,  and  that  the  defendant  fi-jiuduiently 
directed  the  jdaintiff  to  i)lace  on  each  of  ihe  said 
jirtich's  a  mark  which  was  the  trademark  of  one  R  : 
and  that  tlic  defeinhint  did  so  innix-entlv,  ajid  was 
thereby  subjected  to  a  clnuicery  suit  at  the  suit  of 
H,  which  he  had  to  pay  a  hirgc  sum  to  coin[)romise. 
I  [(hi,  that  as  this  suit  coukl  have  been  ju-osecutcd 
by  \l  successfully  for  an  injuncti(m  and  an  account, 
thcdeclarntion  sh.twed  a  good  cause  of  action.  itSOl, 
(^iK'vii' -s  Ihiich,  Di.Kon  i\  Fawcus,  7  .lin'isl,  {X.  S.) 
S'.).');  S.  C,  30  &ffO  J.  R.  {Q.  B.)  137;  S.  C,  I) 
nW/d//  7^.414;  S.  C,  3  Law  Tliiie.s  IL  {X.  S.) 
<J1)3;  S.  ('..  3/!;/.  ct- >;/.  037. 

;^  &21.  In  an  action  Ijrought  fo  restrain  the  dcfen- 
huits  fi'om  infringing  ])laintiJl's'  titidemnrk  and  for 
<l;im!igcs,  an  answer  alleging  that  the  (lch'ii(l:ints 
had  sold  only  a  very  smnll  and  specified  (|uantity 
of  mei'chandise  bearing  the  lalx^l  <'om])laiiu'd  of,  and 
that  the  same  was  sold  to  ])laintill's'  agent  at  their 
req^uest  and  that  the  use  of  the  bibel  wijs  accidental, 


fv 


.  1  -; 


294 


Pleading. 


li'  '4* 


v'm: 


yi  w 


Avithont  intent  to(Tefrantl  i)lnintiffs,  or  imitate  their 
label  and  did  not  represent  tlie  article  to  be  the 
plain  tiffs',  is  not  frivolous.  18r>-2,  iV.  Y.  i^nperlar 
Ct.  G.  T.,  Gnillion  r.  Liiido.  0  Bosk^  (505. 

§  828,  Coinplainants  alleii'ed  that  they  are  entitled 
to  the  sole  and  ex(^lnsive  riii'lit  to  manufaetui'e  and 
sell  a  cei-tain  pi-eixn-ation  known  as  l)i-,  Sinmions' 
Liv(M'  Ileii;ulalor  or  Medicine,  and  have  acquired 
right  theieto'  by  purchase;  and  that  they  have  ex- 
pended laruv  sums  of  money  in  manufacturinii:  and 
advei'tisim!:  it,  bv  whicii  it  lias  ])ecome  widelv 
known  and  justly  celebrated  lor  the  pur|X)ses  it  is 
intended  to  accomplish.  And  that  they  have 
ado[)ted  ceitain  ti'udemarks,  in  which  their  ])ack- 
ages  are  put  up;  and  tliat  tlie  plaintiif  in  erroi-  has 
couimenced  to  sell  a  i)reparation  which  he  calls  by 
nearly  a  similar  name,  and  is  puttinu'  it  np  in  ])ack- 
ages  oT  similar  fonn  and  size,  and  that  the  general 
appearance  and  printed  inchn'sements  thereon,  is 
inteiiih^d  to  take  advantage  of  the  reputation 
acquired  by  the  reputation  of  Zeilen  &  Co.,  which 
they  allege  is  a  fraud  upon  their  rights,  &c.  To 
which  bill  a  demuri'er  was  tiled,  which  was  over- 
ruled by  the  court.  7/c7c/,  that  as  the  demui'i-er 
aduiits  (hat  what  was  d(me,  was  done  intentionallv 
to  tak(!  a<lvantage  of  the  ivpnt;Uion  of  the  com- 
I)lainants'  "Sinunons'  Liver  Medicine,''  the  court 
below  did  not  err  in  retaining-  the  bill  for  a  hearing 
to  let  the  whole  n>atter  be  deterunned  upon  its 
merits.  1871,  Siq^reme  Ct.  of  da.,  Ellis  v.  Zeilen, 
42  (id.  01. 

ij  821).  A  sale  of  a  mineral  spi'ing  canies  to  the 
])urcliaser  the  right  to  us(?  the  tiiulemai'k  of  the 
watci's  :  and  in  an  acticm  by  the  pur<'haser  to  enjoin 
third  persons  from  infringing,  tlie  complaint  need 


Pleading. 


295 


not  allege  any  express  assignment  of  the  trademark. 
1871,  JV.  Y.  67.  Aj>/>ro}.s\  Congress  &'  Empire 
Spring  Company  v.  High  llock  Congress  S[)iing 
Company,  4.")  X  F.  '2'.)\  ;  S.  C.  10  Abb.  Pr.  {X.  .^'.) 
^48;  reversing  S.  C,  o7  Bdih.  :>:>(}. 

^830.  In  an  action  Tor  daninges  for  iirfringemenr 
ol'  a  tindemark,  :in  answer  deiivim!,'  knuwledu'e  of 
l)]aintift"s  ownership  of  the  trademai'k,  and  any  in 
tenlion  fo  do  \vi<nig,  and  aveiiing  a  single  sale  of 
(he  simulated  article,  is  not  I'livolous  ;  these  allega- 
tions being  important  on  the  (piestion  of  damages 
1871,  N.  Y,  Snpremr.  CL  ^'.  T.,  Faber  c.  D'Utassey, 
11  Abb.  Pr.  {X.  *s'.)  8131). 

§  8:31.  A  bill  was  filed  to  resfraiii  the  defend- 
ants from  issuing  a  pr<»specfus  calcnlated  to  mis- 
lead the  public;  into  the  belief  that  tlu'  businc^ss 
carj'ied  on  by  the  defeiKhmts  was  the  plaintiirs' 
business.  The  Itill  stated  that  one  of  tlie  defend- 
ants (C.  .1.  Christie),  had  Ihhmi  adjudicated  a  Inink- 
rupt,  and  pi'ioi-  then^to  had  lost  his  situation  as 
secretary  of  St,  Marvle])one  Female  Charity  Scliool, 
in  consecpience  of  having  been  clunged  with  intent 
to  defraud  (me  S  l)y  false  checpies  ;  that  he  had 
been  committed  for  trial  and  the  money,  in  respect 
of  which  the  charge  Lad  been  made,  sid)sequenlly 
paid  by  cme  of  his  relatives,  and  that  S  had  then 
Aviihclrew  from  in'osecution — that  the  defendants 
were  ])(M\sons  of  no  jueans.  l"]xce])tioiis  wcnv  taken 
only  to  those  statements  regai'ding  tliecliai'ge  mad(^ 
against  thi»  defendant  C.  J.  Clirislie  as  being  scan- 
d:j](Uis  and  impertinent.  ILhh  that  it  was  ivlevanf 
to  ihe  issu<^  to  state  what  wei-e  the  antecedents  of 
the  defendants,  who  they  were,  from  wiience  they 
eame,  and  how  they  had  been  employed  ;  that 
t]i()Ui::h    the    matter    was    scaiKhilons,    as    it    was 


■■.(, 


( ; 


r  ';^'^biK!<. 


M 


:.^^iiA 


^pp 


296 


Practice. 


vm 


mV 


11 


I- 


relevant  to  the  issue  it  was  not  impertinent,  and 
tlint  the  exce])tions  shoiikl  be  overruled.  Christie 
T.  Christie,  Vice  C7i.  J/alhi.s,  WeeJdi/  Kales,  1873, 
7  ;  S.  C,  reversed,  L.  J.  J.  Ihid.  70.' 

§  8;>2.  In  an  nction  to  restrain  (he  violation  of  a 
tradeniai'k,  a  eounter-claini  on  the  i)art  of  defend- 
ant ulle.n'ing  that  he  is  himself  the  owner  of  the 
name,  that  phiintill'  has  Avrongfully  used  it,  and 
asking  that  plaintilT  be  restrained  from  such  use, 
and  be  required  to  ptiy  damages  for  the  infringe- 
ment t)f  tlie  defendant's  ri^^l.t  thereto,  is  i)roper  ; 
and  iC  the  allegations  are  sustained,  defendant  is 
entitled  to  tlie  relief  sought.  It  is  a  cause  of 
action  connected  with  the  subject  of  the  action  set 
foi'th  in  the  complaint,  and  so  falls  within  the 
definition  of  a  counter-claim,  as  given  by  the  Code 
of  Procedure  (§  loO).  1874,  iY.  T.  Com.  of  App., 
Glen  &  Hall  Mfg.  Co.  v.  Hall,  01  N.  Y.  220  ;  rev'g 
S.  C,  6  Laiis.  158. 


'  ■ 

'i^ 

:     r 

• 

1 

t 

'  ; 

it 

;: 

1  ■ 

'\ 

fi.  _ 

'W'' 

i 

I:: 

PRACTICE. 

§  840.  It  ftee?:is,  that  on  a  motion  to  dissolve  an 
injunction  restraining  the  use  of  a  trademark, 
gi'anted  on  the  complaint  and  affidavits,  the  i)lain- 
tiffs  !ire  not  tit  lil)erty  to  read  new  affidavits  to  sup- 
port the  idlegatious  in  the  complaint.  Per  Woou- 
uui'F.  J.  Whether  in  a  case  wherein  the  defense 
rest  upon  new  matter  set  up  in  the  answer,  in  avoid- 
ance of  the  facts  charged  in  the  complaint,  but 
admitting  tlu^  clmrges  to  be  true,  the  answer  may 
be  i'egard(>d  as  itself  an  affidavit,  so  as  to  permit 
counter  aflidavits  by  the  plaintilfs  il  Qiiere.  18."}.li, 
K.  Y.  Coiiimo)!  Pleas,  G.  71,  Merrimack  Mfg.  Co. 
0,  Garner,  4  E.  1).  Sniltlu  387  ;  S.  C,  2  Abb.  Pr.  318. 


J" 


Practice. 


297 


§  841.  Wliei'e  a  prelimiiuiry  injunction  is  dis- 
solved on  the  liTonnd  tliut  tlie  plaintiifs  legal  title 
to  his  trndeniaik  is  doubtful,  it  is  proper  to  impose, 
as  a  condition  to  such  dissolution,  that  the  dei'end- 
tmts  enter  into  an  undertaking  to  keep  an  account 
ot*  their  sales  and  render  the  same  when  required 
by  the  order  of  a  ccmipetent  court.  Tlie  plaintiil'  to 
esiablisli  in  the  action  his  legal  title,  if  he  can,  as 
well  as  any  other  grounds  of  relief,  upon  tlu3  trial. 
The  undertaking  to  be  considered  as  security  for 
keeping  the  account  and  rendering  it.  18,37,  jY.  Y. 
t^aperlor  Gt.  8.  T.^  Fetridge  v.  Merchant,  4  Abb. 
Pr.  1.5G. 

ij  842.  If  a  party  is  examined  as  a  witness,  his 
refusal  to  answer  a  cross  (pU:;stion,  pertinent  to  the 
issue,  is  liis  own  act.  It  must  entail  upon  him  tlie 
loss  of  his  testimony  in  his  own  favor,  or  may  sub- 
ject him  to  the  usual  conipulsory  process  lo  compel 
a  witness  to  testify  if  his  adversary  require  it. 
1800,  N.  Y.  t^iriH^rior  CL  G.  T.,  Burnett  r.  Phalon, 
11  Abb.  Pr.  157  ;  S.  C,  IJ)  How.  Pr.  r)?>(). 

^  84)].  Whether  a  referee  appointed  merely  to 
computi^  and  I'eport  the  damages  susttiined  by  the 
l)laiiitiil's  l)y  leason  of  the  vioiatiiiu  of  their  trade- 
mark, admitting  he  has  tlie  power  to  strike  out  the 
plaintiifs  testimony  in  chief,  for  refusing  to  answer 
a  pertinent  question,  on  cross  examination,  has  the 
power  to  issue  a  compulsoi-y  process  to  require  the 
plaintiif  to  answer.     (J/zcrc  /     Ibhl. 

i  844.  The  better  practice  is  for  the  referee  to 
give  a  certilicate  setting  forth  the  (piestions,  with 
the  objections  in  detail  of  tlie  witness  to  answering 
them,  and  his  decision  upon  them,  that  the  court 
may  pass  upon  the  remedy.     Ibid. 

%  845.     Where,  however,  the  referee  in  sucli  case 


\-    fl-; 


".    FV;-? 


!     ti 


■ji: 


#. 


i  ' 


'^HSi 


298 


Practice. 


struck  out  the  plaintiiFs  testimony  as  to  damages, 
for  liis  rel'iisal  to  answer  a  pertinent  question  on  his 
cross  examination,  nnd  then  chxsed  the  case,  and 
thereby  shut  out  all  testimony  on  tliat  question, 
wliicli  miulii  liave  formed  a, general  exception  to  the 
rei)ort :  I/c/^/,  that  iin  ex(;epti(m  to  this  decision 
brought  up  the  case  to  be  I'eguhirly  XJassed  upon  by 
the  court.     Ibid. 

§  84(3.  In  tradenrark  cases,  under  tlie  Code  of 
Procedure,  tlie  judgment  cannot  direct  the  damages 
to  be  ass(\ss(;'d  by  a  sheiilf  s  Jury.  The  proofs  must 
be  taken  by  tlie  court  or  referee.  180-2,  iY.  Y.  Sa- 
pen'or  C(.  G.  71,  Guilhon  v.  Lindo,  9  Bos/d.  GO;"). 

§  847.  AVliere  in  an  action  brouglit  to  enjoin  tlie 
use  by  defendant  of  pla.intiff's  trademark  and  for 
damages,  judgment  is  ordered  for  frivolousness  of 
defendant's  i>leadings,  the  judgment  should  be 
either  iu  the  i'oiui  pi-oper  where  nothing  is  left  to  be 
ascertained  but  the  amount  of  damages,  or  it  should 
simply  adjudge  the  pleading  fi'ivolous  and  leave 
the  plaintilV  to  apply  to  the  court  for  the  relief  he 
seeks.     7  />/>/. 

^  848.  The  plaintifl'  in  an  action  is  entitled  to  an 
injunction  at  the  timeoL'  issuing  the  summons  upon 
the  com[)hiint  alone,  if  it  makes  a  proper  case  and 
is  verilied  in  tlie  manner  stated  in  the  one  hundred 
and  thii'teenth  secticm  of  the  practice  act  {Laws  of 
California).,  but  if  he  asks  for  an  injunclion  there- 
after, h(^  must  do  so  upon  affidavits.  Where  an 
injunction  has  bren  gjanted  witlnmt  notice  to  the 
defendant,  lie  may  move  to  dissolve,  lirst  upon  the 
pai)ers,  whatever  tliev  may  have  been,  upon  Avliich 
it  was  granted,  oi'  second,  upon  the  papers  upon 
which  it  was  granted  and  affidavits  on  the  part  of 
the  defendant,  with  or  without  the  answer.     If  the 


f)  ii' 


s 


PkioPw  Use. 


200 


defendant  rests  his  motir)n  on  the  papers  upon 
wliirh  tlie  injunction  was  ui-anted,  tli(^  i)laintifr  caii 
make  no  I'ui-tlier  shouinu".  but  niusf  stand  ii]»on  liis 
complaint,  or  liis  complaint  and  aflidavits,  as  the 
case  may  l)e  ;  but  il'  the  (U'Tendant  makes  u  countoi* 
showing-,  by  aflidavits,  with  or  without  the  answer, 
the  i)laiutilt'  may  min^t  it  with  a  lurther  showiu^'  on 
Ids  jiart.  If  tlip  del"en(hint  movinij;  t<»  dissolve  an 
injunction,  uses  his  verilied  answcjfor  that  purpose. 
he  makes  it  an  aUidavit  in  the  sense  of  section  IbS  of 
the  i)ractice  act  for  all  the  purposes  of  his  motion  : 
and,  as  in  the  case  of  his  use  of  affidavits  for  that, 
purposf.^  Avitliout  the  answer,  the  ])laintin"  is  ecpially 
entitled  to  reply  byway  of  aifidavits  on  liis  i)ai't.  1808, 
Siiprrine  Ct.  of  Oil.,  Falkin])urii-  y\  Lucy,  i>.)  (Jal.  .'-J. 

^  840.  An  app(nd  from  a  decree  uiantiii,!;:  an  ia- 
junction  to  restrain  tlie  use  of  a  tradeiuaik  ordered 
to  be  advanced,  on  the  ground  that  the  injui-y  done 
to  the  defendant  by  the  continuance  of  the  iiijuiu' 
tion,  if  wrongly  granted,  would  be  irrei)arable. 
1870,  Before  the  Lords  Jnstice.Sy  La/enby  r.  White, 
Law  n.  0  Ch.  A/).  89  :  S.  C,  10  W.  li^-2\n. 

^  800.  In  a  suit  in  ecpiity  to  restrain  an  alleged 
infringement  of  a  tnuleiiiark  right  iji  the  title  of  a 
publication,  where  it  did  not  appear  wlietli(>r  or  not 
the  public  was  actually  deceived,  or  in  danger  of 
]jeing  deceived,  it  Avas  referred  to  a  master,  to  ascer- 
tain and  report  whether  such  A\'as  the  fact.  1872, 
U.  ^.  Virc.  CI.  Maine,  Osgood  t.  Allen,  1  lloliueH, 
185  ;  S.  C,  0  Am.  Lam  T.  11.  20. 


ln:m 


in 


"^RIOK  USE. 

§  85(5.     In  asserting  a  prior  use  of  the  trademark, 
the  claim  is  not  supported  by  proof  that  one  term  of 


■  V         '1 


I* 

1^'  ; '  ;  ii' 


f. 


300 


Prior  Use. 


m  •  !■ 


\{M 


!«! 


il. 


i'   W 

"  ''a 


I'    # 


I 


111   ■•;' 


I 

i 


IV  ^ 


the  same  appeared  incidentally  in  a  longer  phrase, 
whereof  the  conspicuous  element  was  quite  differ- 
ent;  for  instance,  a  trademark,  in  18G.">,  of  "Gen- 
nine  Durham  Smoking  To])acco"  is  not  inval- 
idated by  the  defendant's  use  in  1800,  of  a  brand  ot 
"Best  Spanish  Flavored  Durham  Smoking  To- 
bacco,'' where  the  i)leadings  and  proofs  show  that 
"  Durham"  was  used  incidentally  and  without  sig- 
nihcance  ;  ;ind  the  chai-acteristic  and  descriptive 
phrase  was  "J3est  Spanish  Flavored,"  having  spe- 
ci:il  reference  to  a  iiavoring  compound,  which  was 
claimed  as  a  discovery  in  the  treatment  of  the  article. 
1872,  U.  >V.  Circ.  CL  Va.,  Black  well  v.  Armistead,  5 
Am.  Law  Times.,  ^T^. 

%  8.")7.  Three  brothers,  William,  xisa  II.  and 
Simeon  S.  liogers,  were  engaged  for  many  years  in  the 
business  of  manufacturing  plated  spoons  and  forks, 
sometimes  as  partners  under  the  name  of  *'  Rogers 
Brothers,"  and  s(^metime,s  as  st(K'kholders  in  joint 
stock  coi'[)orations.  The  goods  manufactured  by 
such  ])artnersliii)s  and  cori)orations  were  stamped 
with  vaiious  devices,  each  of  which  contained  the 
name  "  ilogers."  In  1862,  all  such  partnership)s 
and  corporations,  with  one  exception,  had  ceased  to 
do  business,  and  the  three  brothers  entered  into  a 
contract  with  the  x)laintilfs,  by  which  the  latter 
agreed  to  manufacture  such  goods  under  their  su- 
pervision. The  goods  so  manufactured  were 
stamped  "184:7,  Rogers  Bros.,  A  1,"  which  stamp 
differed  somewhat  from  any  stamp  previously  used. 
The  plaintiifs  claimed  protection,  not  in  the  words, 
"  Rogers  Brothers,"  but  "•  Rogers  Bros, "  with  the 
li,<i;ures  ''  1847"  x>relixed  and  the  letter  and  iigure  ''  A 
1"  annexed.  The  respondent  contended  that  the  name 
'•  Rogers  Brothers  "  could  not  lawfully  be  used  by 


tt    - 


[Fuhlicat/ons}      Publications,   [generallf/.^  301 

the  plaintifTs  as  a  trademark,  for  tlie  reason  that 
long  before  the  plaint  iff  sromnienced  to  stamp  their 
goods  wirli  that  name,  it  liad  Ix'en  appi'opriuted  by 
other  matiufactiirers  for  that  purpose,  and  for  the 
reason  that  it  was  tlien  well  known  in  the  market 
as  a  brand  for  the  goods  of  mannfactni'ers  otlier 
than  the  X)laintiiTs.  Held,  that  the  plaintiffs  i\-c- 
(piired  a  lawful  riglit  to  tlie  nse  of  sncli  name  as  a 
piii't  of  their  trademark.  That  the  mei-e  fact  that 
the  name  '•  Kogers  Brothers  "  had  l)een  piwiously 
nsed  by  otlier  i)ersons  and  corporations,  conhl  not, 
of  itself,  operate  to  prevent  the  plaintiffs  from  af- 
qniring  a  right  to  the  use  of  the  same  name  as  a 
pai't  of  their  trademark.  That  said  parinoi'ships 
and  corpoi-ations,  save  one,  having  lost  or  siii'i-en- 
dei'ed  the  right  to  said  name  by  ceasing  to  manu- 
facture goods,  the  right  to  the  nse  of  I  heir  own 
name  reverted  to  the  Rogers  brothers,  who  might 
under  certain  legal  restrictions  impart  that  lig'it  to 
the  plaintiffs.  That  the  respondent  had  no  cause 
of  complaint,  or  right  to  derive  any  advantage  from 
the  fact  that  the  trademarks  of  the  plainfiifs  and 
said  single  corporation  which  nsed  the  name 
''Rogers  &  Brothers,"  resembled  each  other. 
1872,  ^^uprcvie  CL  of  Error's,  Connecticut,  ]Meriden 
Britannia  Co.  v.  Parker,  39  Co?in.  450. 

See  §  262,  Acquisition  of  Trademarks. 


^i:- 


PUBLICATIONS. 

I.  Publications — generally,  §  8G5. 
II.  Advertisements,  circulars,  &c.,  §  8G7. 

III.  Books,  plays,  &c.,  §  87V. 

IV.  Xewspapers,  §  890. 


m 


i  -if  i 

|l 

J': 


m 


n 


t\  11 


302  [Advcrilscmefils,]  Puijlicatioxs.  [circulars.] 

I.  Pnblicalions — (/oieraUi/. 

%  80;").  Tlie  court  will  not  jn'otet't  tlie  owner  of  a 
misrliiovons  or  libelous  imbliciition  by  ]'(\straining 
tho  publication  of  it  by  other  pei-sons.  1802,  Lord 
CIi.  EI(Um,  Wiilcot  t\  W^alker,  7  V V.v.  ,//•.  1  ;  1817, 
Lord,  (Jh.  Eldon,  Soiitliey  v.  Slierwood,  2  Mer. 
4;3."). 

§  8C?r).  The  court  of  chancery  has  jurisrliction  to 
prevent  the  publication  of  any  lettei-,  advertise- 
ment, or  other  document,  which,  if  permitted  to  go 
on,  would  have  the  effect  of  destroying  the  prop- 
erty of  another  person,  whether  that  consists  of 
tangible  or  intangible  property,  whether  it  consists 
of  money  or  reputation.  The  publication  of  a  no- 
tice stating  that  the  plaintiff  was  a  paitner  in  a 
])ankrui)t  lirm,  restrained.  1809,  Vice  Ch.  M(flins, 
Dixon  r.  Ilolden,  L.  li.  7  Eq.,  488.  See  1  //.  L. 
C.  :?G;i;  11  Beat).  112;  L.  R.  0  Eq.  551  ;  L.  B.2 
Ch.  807. 

II.  Adt'crtisements  and  Circulars. 

%  807.  The  defendant,  a  chemist  and  druggist, 
had  inserted  advertisements  in  the  public  journals, 
so  expressed  as  to  induce  the  world  at  large  to 
believe  that  certain  pills  sold  by  him,  and  intended 
for  tlie  cure  of  consumption,  were  pills  prepared 
and  sold  by  him,  with  the  sanction  of  the  plaintiff", 
who  was  a  physician  of  great  eminence,  practising 
in  the  me;  ropolis,  and  celebrated  for  his  skill  in  cases 
of  consumption.  Held,  on  application  for  special 
injunction  to  restrain  the  publication  of  such  adver- 
tisements, that  the  court  had  no  jurisdiction  to 
grant  the  siune,  the  injury  being  that  of  defamation 


[Advertisements,]  PrDLiCATioxs.   [clmtfnrs.]  303 


rather  than  injiiry  to  pioperty.  1818,  Uolts  Ct.^ 
Clark  y\  FriH'inan,  17  La.io  ."/.  Yi*.  (7/.  {^\  H.) 
142;  S.  C,  \'2Jiir.  U\)\  S.  C,  11  Pxar.  118. 

!j  8(58.  PlainfilTs,  who  were  nitiiiiiractiuvi's,  had 
moved  for  an  injunction  to  resti-ain  tii«^  dd'tMidanis 
I'roni  sellinL?anv  eotton  sewing'  tliread  hv  tlie  name 
oi'  '"CTlaee,"  or  "Pat<'nt  Ghice  Thread,"  or  havin/i, 
labels  or  wi'appers  with  tlie  words  ••(Uaco"  oi' 
'•Patent  (Tlace"  thereon,  those  teiins  lieinu'  claimed 
by  th<^  plaintilfs  as  their  tradeinaiks.  The  coiii-L 
directed  the  motion  to  stand  over,  with  liberty  to 
tlu^  plairiliiVs  to  brinu;  such  action  as  they  miiilit  be 
advised.  The  i)laintiirs  published  in  I  lie  news- 
l)apers,  and  circidated  by  means  of  handbills,  a 
]'e[)ort  of  the  proceedings  on  the  motion,  in  which 
repoit  it  Avas,  amouii'st  other  tliiii,Li;s,  stated  that  it 
was  ''established  in  evidence  that  the  piainl ill's 
were  thi>  first  to  use  the  word  in  qn(\sti(m,''  The 
defendunis  moved  to  restrain  publication  of  the 
repor*,  on  the  grouml  that  it  was  uiurue,  the  fact 
being  that  evidence  was  not  gone  into  on  the  mo- 
tion ;  and  that  it  woidd  have  the  elFect  of  ol)struci- 
ing  justice,  and  prejudicing  the  defendants'  case. 
The  court  considered  that  the  publication,  though 
unfair,  was  not  a  libel,  and  not  such  as  would 
obstruct  the  course  of  justice,  and  refused  the  mo- 
tion;  the  costs  to  be  costs  in  the  cause.  180(),  Vice 
(Jh.  Stuarts'  Ct.,  Brook  v.  Evjins,  2  L.  T,  1?.  {X. 
R)  740;  S.  C,  affirmed,  2D  L.  J.  11.  {N.  >^'.)  (Jh. 
61G. 

§  8G9.  The  plaintiffs  and  defendants  carried  on 
business  of  a  similar  description.  On  the  expira- 
tion of  the  term  in  a  lease  of  certain  works  of  the 
plainiilis,  where  they  had  carried  on  their  business, 
the  defendants,  fifteen  months  aftei'wards,  had  pro- 


V,  'f'-. 


804  [Advci'lisemcnts,]  PinLTCATioxs.  [rircvlars.'] 


t 


1^ 


V 


I      ''' 


■l 


cured  a  lease  of  the  same  works,  wiili  tlie  cxreption 
of  certain  mines  of  day.  Tlie  (Icfcndiints  issued  u 
clrcnlav  and  cai'd  tendinis;  to  lead  tlii^  piiMic  to  sup- 
pose that  the  defendants liad  suocrcMh^d  to  the  busi- 
ness of  tlie  phnntilfs,  and  were  working;  the  same 
material  as  tlie  i)liiintin's  had  formerly  nsed.  TTiJd, 
that,  althon;^h  the  words  of  the  ciividar  and  card 
might  be  literally  ti-ne,  yet,  if  they  tended  to  mis- 
lead the  public,  the  court  would  restrain  them  from 
further  circulating  or  issuing  such  or  any  similar 
circular  or  card.  1801,  Vice  (lit.  Wood'.s'  Courts 
Harper  i).  Pearson,  !3  Law  TimcH  11.  {N.  K)  r)47. 

§  870.  The  defendant  Foster  had  carried  on  bus- 
iness as  an  insurance  broker  as  a  member  of  the 
lirms  of  Foster,  Lacy,  &  Co.,  and  Bashall,  Lacy,  & 
Co.  ViX  indenture,  it  was  agreed  that  said  iirnis 
should  be  dissolved,  and  that  the  plaintiff  Burrows 
should  have  the  benefit  and  advantages  of  the  busi- 
ness and  connections  of  the  said  two  iliins,  and 
should  \h'.  at  libei'ty  to  make  such  ariangenumts  as 
he  might  think  ])r()per  with  said  Lacy  for  forming  a 
new  copa)'tn(>rship,  with  a  view  to  continue  the  bus- 
iness of  the  said  two  iirms.  After  the  said  dissolu- 
tions and  formation  of  the  new  lirm,  the  defendant 
Foster  sent  circulars  to  the  old  correspondents  and 
business  connections  of  the  late  firms,  anncjiincing 
the  dissolution  of  his  firm  of  Foster,  Lacy,  &  Co., 
stating  that  ho  should  continue  to  act  as  an  i'  su- 
rance  broker  as  tlier«4ofore,  and  solicitiu"'  vor 

of  their  esteenuHl  oideis.     The  defenda  as  en- 

joined from  further  sending  saitl  circi  rs,  frcmi 
representing  hi.,  business  to  be  in  continuiitior  of 
that  of  the  lirms  dissolved,  and  from  soliciting  any 
of  the  customers  of  said  dissolved  firms.     18G2,  Ok. 


[Adorrlisenients,]  rumACvnosA.   [circulars.]  30.') 


Co., 

^  ai- 

vor 

en- 

from 

of 


CL  of  Appeal.,  L.  J,  ./.,  Buii'ows  ??.  Fostor,  1   New 

R.  iro. 

jj  871.  The  court  doos  not  recognize  pi-oporl;}'  in 
unpnteiitod  ai-ticlos,  and  will  not  intoircjc  to  id- 
stniin  tlic  sale  of  spuj'ioiis  articles,  tlu)n,i;'li  des- 
ciibed  to  bo  tlu*  same  as  tlioso  nianufacturoil  by 
anotlKir,  uid{;s:4  such  articlos  are  lield  out  by  the 
imitator  to  bo  the  nianufacluroof  thatotlier  person. 
Whore  B  invented  and  sold  a  s(»(;ret  mediciiK^  called 
chlorodyue,  auvd  F  advertised  a  sjjurious  imitation 
of  it  as  ''tlie  original  clilorodyne,''  and  in  conse- 
quence of  said  advertisement  B  added  the  words 
••the  ori/^inal  and  only  .ujenuine"  to  the  des(':'iption 
under  which  he  had  i)reviousl3^  advertised  his  medi- 
cine, and  continued  to  advertise  it  in  that  manner, 
and  the  evidence  showed  that  F's  article  was  not 
mistaken  for  B's,  but  onlj'  that  F  was  t;dven  to  be 
the  lirst  inventor.  Held.,  tliat  B  was  not  entitled  to 
an  injunction  to  restrain  F  from  issnin^^  such  adver- 
tisements. That  although  the  court  believed  the 
statements  of  1»,  that  h(?  was  the  oi-iginal  inventor, 
it  could  not  intei'fero  with  the  defendant  making  a 
counter-statement,  much  as  it  disapproved  of  his 
conduct  and  disbelieved  his  statements.  1804,  Vice 
Ch.  WoofVs  CL,  ]3rowne  t.  Freeman,  4  N.  R.  47G ; 
and  see  S.  C,  12  WeeJdi/  R.  'Mr). 

§  872.  A  circular  was  used  by  parties  then  re- 
cently in  the  employ  of  a  hrm  of  manufacturing 
engineers,  wdiich  informed  the  trade  and  public 
that  they  liad  commenced  business  on  their  own 
account,  and  made  precisely  tlie  same  goods  as 
their  former  employers,  with  great  improvements 
in  the  same,  and  could  sell  them  at  a  much  leduced 
l)rice  as  being  satished  with  smaller  profits.  It 
appeared  that  several  customers  of  the  former  lii-m 

20 


■4 


m 

MIS: 

ft 

!■' 


•.is; 


3' 
■1' 


'if 


I    !^ 


306  [A??7ia7iac5,J  Publications.      [hooIi.<i,  cC-^.] 

had  been  deceived  by  this  circular,  and  removed 
their  custom  to  the  new  firm,  /fid,  that  the  facts 
in  the  circular  not  being  such  as  there  stated,  the 
same  was  a  deceit  ui)on  the  trade  and  the  public, 
and,  as  such,  an  injunction  was  granted  to  restrain 
the  further  issuing  of  the  cii'cular,  &c.  18(58,  V'/Vv? 
Ok.  GiforfVH  e/.,  Stevens  «.  Paine.,  18  Law  T.  JL 
{N.  ^\)0()(). 

^  87:i.  Whether,  apart  from  circumstances  sliow- 
ing  a  fraudulent  intention,  a  person  lias  a  riglit  to 
advertise  himself  as  "agent  for  the  sale  of"  a  par- 
ticular article  without  authority  from  any  deiinite 
principal  'i  Qnere.  1800,  Vice  Ch.  James"  Ct., 
Wheeler  and  Wilson  Manufacturing  Company  v. 
Shakespear,  30  L.  J.  21.  {N.  S.)  CIl^Q. 

See  also  §§  841,  580. 

III.     Almanacs,  BooJcs,  Magazines,  Songs, 
Plaijs,  &c. 

%  877.  Where  it  appeared  that  the  plaintiff  was 
proprietor  of  a  magazine  published  montldy  and 
called  "The  Wonderful  Magazine."  and  the  de- 
fendant after  leaving  the  x>laintiff's  emi)loy  com- 
menced the  publication  of  a  similar  magazine  under 
the  same  title  with  a  similar  device  on  the  cover, 
and  that  on  inspection  the  defendant's  magazine  ap- 
peared to  be  a  succeeding  number  of  the  ])Iaiutilf"s 
l)ublication,  it  taking  uji  the  same  article  in  contin- 
uation which  had  been  left  untiniwhed  in  the  middle 
of  a  sentence  in  plaintiff's  nund)er  preceding  defend- 
ant's publication,  tlie  defendant  was  enjoined 
from  selling  his  said  publication,  or  from  publish- 
ing any  other  work  as  being  a  continuation  of  the 
plaintiff's  work,  but  he  was  not  enjoined  from  the 


Ii  ;■'' 


■;•<■ 


[Almanacs^}      Pi^blicatioxr.    \hookn,  &c.]    HO? 


\  ' 


])ubj5('ation  of  an  original  work  of  rlio  sanuMinture 
and  under  a  similar  title.  18(K^  Lord  C/i.  Eldnru 
Hogg  T.  Kirln-,  8  IV.vr.y  .//•.  215. 

^  878.  The  defendant,  a  ])nl)lisher,  advertised 
for  sale  cerlaiu  poems,  wliieli  he  fuisely  re])r(>s(Mited 
by  adv<U'tisement  to  Ix;  the  work  of  Lord  I'vron. 
He  was  restrained  bv  ininnction  fi-om  ))uh]ishinu'  in 
the  plaintill's  name,  or  as  liis  work,  the  se\eral 
poenr-^  mentioned  in  theadvei'tisenient  or  any  pai'ts 
thereof.  181(3,  Lord  (Jh.  Eldon,  Loi'd  I'vi-on  /;. 
Johnston,  2  Mcr.  29. 

§  879.  Unless  tlie  case  is  iso  clear,  that  there  can 
be  no  reasonable  doubt  with  regard  to  the  legal 
right,  the  court  should  not  exercise  its  ecjui table 
jurisdiction  till  the  legal  right  is  ascertained. 
Hence,  where  the  plaintiff  was  the  owner  of  ;i  pub- 
lication called  "  The  Pictorial  Almanack,"  and  tiie 
defendant  of  (me  called  "Old  Moore's  Familv 
Pictorial  Almanack,"  there  being  little  or  no  re- 
semblance with  I'egard  to  the  substance  and  intei'nal 
portion  of  the  two  woi-ks,  the  covei'sof  both  being 
decorated  with  a  x)ictorial  representation  of  the  ob- 
sei'vatory  at  Greenwich — the  coui't  linding  that  the 
similarity  in  the  appearanc^e  of  the  covers  was  not 
likely  to  deceive  any  one :  Hold,  that  the  ciise  was 
not  sufficiently  clear  to  entitle  the  plaintiff  to  an 
injunction,  and  the  defendant  undertaking  to  keej) 
an  account  the  injunction  granted  by  the  Vice 
Chancellor  was  dissolved,  with  liberty  to  the  i)lain- 
tiff  to  bring  an  action.  1840,  fff.  of  Ohanccvf/, 
Spottiswoode  i\  Clark,  10  Jurist,  10-f:i. 

§  880.  Where  a  publisher  published  !i  song  with 
a  title  page  containing  a  picture  of  the  singer  wlvo 
had  brought  the  song  into  notice,  and  the  words, 
"Minnie,  sung  by  Madame  Anna  Thillon  and  Miss 


\    \ 


.  1). 


it  - 


X 


308  [Almanacs,']  Publications,      [hoolcs,  <£•<?.] 

Dolby  at  J  alien's  Concerts,  written  by  George  I^in- 
ley,"  &('.,  and  another  music  publisher  subse- 
quently published  tlie  same  melody,  with  diil'erent 
woi'ds  and  upon  the  title  page  they  placed  a  similai' 
portrait  of  Madame  Anna  Thillon,  with  the  words, 
'''■Minnie  Dale,  sung  at  ./«//rv/\s' Concerts  (and  al- 
ways eucoi'ed)  by  Madame  Anna  Thillon;  tlm 
music  composed  by  //.  i^.  T/io/npson,''''  &c.,  tliis 
song  having  nevei',  in  truth,  been  sung  by  Madanu* 
Anna  Thillon  at  .Inlien's  Concerts,  lldd,  that 
this  was  a  palpable  attempt  to  induce  the  public  to 
believe  that  the  song  so  published  was  the  same  a° 
that  of  the  first  publisliers,  and  at  their  suit  an  in- 
junction was  granted  on  interlocutory  application 
to  restrain  this  or  any  similar  inrringement  of  their 
riglit  to  the  name  and  description  ol'  their  song. 
IS;"),-),  V/Vr  C7l.  iroo^^'.s  CV.,  Chappodl  ».  Slieard,2 
Kay  (H'J.  117. 

^  881.  The  plaiutid's  iiaving  publislied  a  song,  on 
tlio  title  page  of  which  was  a  portrait  of  Madame 
Anna  Thillon  and  the  words  "Minnie,  sung  by 
Madame  Anna  Thilkm  and  Miss  Dolby  at  Julien's 
Concerts,  written  by  George  Linley,"'  kc,  and  this 
song  having  become  very  popular,  the  defendant 
subse<piently  published  another  song,  consisting  of 
different  words  to  the  same  air,  with  a  title  page  on 
which  there  was  a  different  portrait  of  Machinie 
Anna  Tliilhm,  coi)ied  from  an  American  publica- 
tion, and  the  words,  "Minnie,  dear  Minnie,  ]\hid- 
ame  Thillon."  Held,  that  this  wiis  an  obvious  at- 
tem[)t  to  palm  off  the  defendant's  publication  for 
that  of  the  plaintiffs,  which  had  obtained  the  pub- 
lic favor,  and  this  attempt  was  restrained  by  an  in- 
terlocutory injunction  without  imposing  upon  the 
parties  the  necessity  of  trying  the   right  at  law. 


f-c] 

go  Lin- 
siibse- 
iii'ei-ent 
similar 
\v«  )rds, 
^and  al- 
n- ;  tlin 
:o.,  tliis 
rladaiTio 
r7,  tlial; 
ublic  to 
5ame  a° 
t  an  in- 
dication 
of  tlieir 
ir  song, 
lieard,  2 

>ong,  on 
Vladame 

mg  by 
J  alien's 
and  this 
i'endant 
listing  of 
png(i  on 
Madnnu' 
publica- 
ns Mad- 
I'iouH  at- 
tion  I'oi' 
(he  piib- 
)y  an  in- 
l^on  the 

at  law. 


lAlmanacs,^     Puclicatioxs.    [hoolcs,  <£-c\]  o09 

1855,  Chai:)pell  v.  Davidson,  2  Kai/  &  ./.  123.  On 
appeal,  the  court  did  not  consider  tin*  fraud  clearly 
made  out  and  therefore  :  Ihld,  that  the  injunction 
ought  only  to  be  continued  on  the  terms  (tf  the 
plaintill:  undertaking  to  bring  an  action  and  to  be 
answerable  in  damages.  18.*)G,  ('h.  Vt.  <f  Appeal^ 
L.  ./.  ./.,  Chappell  y.  Davidson,  8  Be  G.  M.  ct  G.  1. 
g  882.  II,  in  1803,  icgistered  an  intended  new 
liiaga/jne,  to  be  called  "  Belgravia.''  In  18(')(J,  such 
magazine  not  hriving  ai)peared,  M,  in  ignorance  of 
what  11  had  done,  projected  a  magazine  with  the 
sain<i  name,  and  incurred  ('(jnsiderable  expiMise  in 
[)re[)ajing  it,  and  extensively  advertising  it  in  Au- 
gust and  iSepteniber,  as  about  to  ai)i)ear  in  October. 
11,  knowing  this,  made  hasty  prepaiations  forbring- 
iug  t)ut  his  own  magazine  before  that  (4*  M  could 
a]>pear,  and  in  the  meantime  accepted  an  order  from 
M,  for  advertising  M's  magazine  on  th*;  covers  of  his 
own  publicaticms,  and  the  iirst  day  on  which  he  in- 
formed M  that  he  objected  to  iiis  publishing  a  mag- 
azine under  that  name  was  the  2.")th  of  September, 
on  which  day  the  Iirst  number  of  U's  magazine  ap- 
l)eare(l.  M's  magazine  appeared  in  Octol)er.  lf<ld, 
on  bill  liled  by  M  (rillirming  the  decisitm  of  Stu- 
AKT,  V.  C),  that  M's  advertisements  and  (^x[)endi- 
tur(!  did  not  give  him  any  exclusive  I'igiit  to  the  use 
of  the  name  ''  Belgravia,"  and  that  he  could  not  re- 
strain II  from  publishing  a  magazine  under  the 
same  name,  the  Iirst  number  of  which  appeared  be- 
fore M  had  published  his.  That  the  mere  inten- 
tion, and  the  declaration  of  intention,  to  use  a  name 
will  not  create  any  property  in  that  name,  and  that 
there  can  be  no  protection  in  the  court  of  chancery 
for  the  intended  name  during  the  course  of  manu- 
facture of  the  article  which  is  to  bear  that  namo. 


t.Vt 


310  [Almanacs,]  Public atiox;^.      [boo/cs,  &c.] 


i-::    :|: 


Ir  ;r 


Ifdd,  on  bill  filed  by  IT,  that  H's  loo-ii-tcriniT:  the  ti- 
tle of  an  intended  i)nl)]i<'ati(m  could  not  give  him  a 
copyi'ight  in  that  name,  and  tliat,  in  the  (rircii in- 
stances of  the  case,  he  had  not  acquired  any  riu'lit 
to  restrain  31  fioni  using  the  name  as  Ix^ing  it's 
trademark.  That  it"  M  had  not  been  intert'errd 
with,  and  had  been  allowed  to  i)ublish  a  magazino, 
and  to  sell  it  i'orsome  time,  he  would  have  ohlained. 
according  to  the  doctrine  of  tradrMutirks,  a  I'ight  tc 
continne  the  exclusive  use  oi'  tliat;  name,  as  indicat- 
ing a  monthly  periodical.  18(57,  ('//.  C/.  (ff  Ap- 
2MUfl,  Maxwell  r.  Hogg  ;  Hogg  v.  Maxwell,  Lr/iG  Jl. 
2  U/i.  mi ;  S.  C,  30  L.  J.  A.  {N.  >s'.)  C k.  4\VX 

^  883.  \V'ords  wduch  in  their  ordinary  and 
universal  nsedenote  the  virtues,  such  as  ''Charity,'" 
"■Faith,"  can  not  ordinarily  be  ai^propriated  by 
any  (me  as  a  title  or  designation  I'or  a  book,  ]^lay, 
&c.,  written,  &c.,  by  him,  treating  oi-enfoicuig,  sym- 
l)olizing,  &c.,  a  virtue,  to  the  exclusicm  of  any  otlier 
person  who  may  write,  &c.,  a  book,  play,  &c.,  treat- 
ing npon,  enforcing,  symbolizing,  c\:c.,  the  same 
virtue.  There  may  l)e  cases  where  a  title  is  made 
nse  of  in  bad  faith,  or  to  j^romote  some  imposition, 
or  to  inflict  a  wrong,  when  a  court  of  justice  siiould 
interfere  to  prevent  its  nse  or  to  compensate  a  paity 
who  has  in  consequence  sustained  an  injury.  1874, 
N.  y.  Superior  Ct.,  S.  7'.,  Isaacs  r.  Daly,  ;'>9  X.  )'. 
Superior  Ct.  (7  J.  &  S.)  511. 

§  884.  The plaintilf,  in  Decemlier,  1873,  deposit'M I 
in  the  copyright  office  at  Washington  th(^  title  of  a 
play  called  ''Charity,"  and  copyright'^l  such  di"i- 
matic  composition.  The  defendaui,  in  .lanuary, 
1874,  i)urchased  manuscript  copie?'!  of  a  different 
play,  also  called  "Charily,"  prepared  it  for  iwr- 
formance  in  February  following,  and  advei'tised  it 


If  ;■;. 


is 
:.:lt 


w 


[Almanacs,]     Publicatioxs.    [boo/cs,  &c.]   311 


for  public  representation  on  March  3,  1874.  Plain- 
tilf  s  motion  for  an  injunction  was  denied  on  the 
grounds  stated  in  the  precedini?  section.     /O/f/. 

§  88."),  Plaintiff  for  upwards  of  oi,uht  y(^ars  had 
bee'"  engaged  in  selling  pills  uiuler  the  nanu;  of 
"Magic  Cure "  for  the  tieatnient  of  malarial  diseases. 
Tlie  subject  of  diseases  in  general,  and  of  mala- 
rial diseases  in  particular,  with  a  desciiption  of  the 
effects  expected  to  be  secured  by  use  of  the  "Magic 
Cure,"  was  treated  of  in  a  small  pampldet  wirh 
red  cover,  called  '"The Little  Rod  Book.  New  Series, 
187.").'''  The  pamphlet  contained  a  large  number 
of  commendatory  letters,  and  references  were  made 
to  persons  named.  Defendant  was  at  one  time  em- 
ployed by  plaintiff  in  said  business.  After  that 
relation  was  terminated  he  commenced  to  sell  pills 
called  "Moore's  Pilules"  for  nudarial  diseases. 
He  also  published  a  book  called  the  "Red  and 
White  Book,"  with  the  figures  "oO,  50"  at  foot  of 
first  and  top  of  last  page  of  cover;  the  words 
"The"  and  "White"  and  the  figures  were  printed 
with  white  letters,  wliile  the  words  "Red  Book" 
weie  pi'inted  in  red  letters.  The  same  subject  wjis 
discussed  in  defendant's  as  in  plaintiff's  l)0()k,  but 
in  a  different  manner.  Ills  l)0()k  had  iu>  com- 
mendatory letters,  but  a  list  of  refeiences  was  in  it, 
ccmtaining  most  of  the  names  in  plaintiff's  l)ook. 
The  points  of  difference  were  prominent  and  strik- 
ing, although  i)y  the  red  cover,  tlie  title  and  the 
references,  indicated  a  disposition  on  the  part  of 
tlie  defendant  to  impose  on  plaintill's  customers. 
Ilr/(K  that  plaintiff  was  not  entitled  to  an  injunc- 
tion y^r'/zr/r;//^' ///^^  Courts  of  e(pnty  will  interfere 
to  prevent  oiu  person  from  imposing  ui)()n  or 
deceiviniJ:  the  customers  of  another  bv  means  -of 


i  - 


Ml 


ic^iSi 


11 


;i' 


812  [Almajiacs,]  Public atiox.s.      [booLs',  d-c] 

simulated  labels,  marks,  indicia  or  advei'tisenients, 
but  it  must  be  shown  that  the  devices  adopted  are 
such  as  would  ordinarily  lead  peisons  dealing  in 
the  articles  to  suppose  them  to  be  the  same.  1875, 
J\r.  Y.  Supreme  Ct.  G.  T.,  Tallcot  «.  Moore,  13  N. 
Y.  Supreme  Ct.  lOG. 

§  880,  The  plaintiff  had  acquired  a  reputation  for 
his  literary  productions  under  the  nom,  de  plume  of 
"Mark  Twain."  The  defendant  obtained  permis- 
sion from  the  plaintitt'  to  publish  one  of  his  essays 
in  a  pamphlet  entitled  "Pun,  Fact  and  Fancy," 
containinj^  advertisements,  anecdotes,  sketches,  &c., 
and  the  plaintiff  ielivere^T  t-^^  the  defendant  a  vol- 
ume of  essays  \.'hich  had  been  published  but  not 
coi)yiii2,hted,  in  order  that  one  essay  therefrom 
might  be  selected  for  said  pamphlet.  The  defen- 
dant published  in  said  pamphlet  six  essays  purport- 
ing to  have  been  written  bv  "Mark  Twain,"'  and 
with  the  false  statement  upon  the  title  page  that 
said  essavs  had  been  revised  and  selected  bv  the 
author  "Mark  Twain"  for  said  pamphlet.  Five  of 
said  essays  had  been  taken  from  the  volume  deliv- 
eied  by  the  plaintiff  as  aforesaid,  and  tlie  remaining 
essay  had  not  been  written  by  the  plaintiff.  The 
defendant  was  enjoined  pendeule  lite  from  using 
said  nom  de  plume  on  the  title  page  of  said  pamph- 
let or  as  the  author  or  revisor  of  anj-  pamphlet  or 
book,  or  from  publishing  any  matter  alleged  to 
have  been  written  by  the  plaintiff  under  the  )iom  de 
plume  (►f  "Mark  Twain,"  excf3pt  one  essay  from 
said  volume  delivered  to  the  defendant  as  aforesaid  ; 
and  defendant  was  permitted  to  state  upon  the 
title  page  of  said  pamphlet  that  the  book  contained 
among  other  things  a  sketch  by  "Mark  Twain." 


[jVeics-]         PuiJLiOATioxs.      [papers.]     313 


1873,  June  12  and  July  11,  iV^.    Y.  Supreme  Ct.  8. 
T.  1st  I)ist.,  Clemens  v.  Siicli,  unreported. 

See  also  §§  139,  201,  203,  490. 

IV.  Neipspapers. 


§  890.  "  Let  an  injunction  be  awarded  to  restrain 
the  defendants  B  and  II,  their  sei-vnnts,  workmen 
and  agents,  from  i')rinting  and  publishing,  compos- 
ing, and  offering  for  sale  the  n(nvs])iiper  in  the 
pleadings  mentioned,  called  'The  Ileal  John  JjuH' 
or  'The  Old  Ileal  John  Ball,'  and  from  printing, 
or  publishing,  or  exposing  or  offering  for  snle  any 
newspapers  or  newspaper  as  and  for  a  continual  ion 
of  the  plaintiff  H  said  newspaper  cnlle'd  'The  Ileal 
John  Bull  ;'  until,"  &c.  Edmonds  /-.  Beubow,  F(!b- 
ruary  20,  1821,  .1.  572;  settled  by  the  V.  Ck.  ; 
Hdon.  on  Decrees^  3rd  Edition,  905.  See  Tonson  r. 
Walkei',  3  Swan.  081. 

§891.  A  person  having  sold  a  news[)aper  estab- 
lishment, togethei-  with  the  name  of  the  papei'.  has 
no  right  to  i)ublish  another  paper  as  that  which  ho 
has  sold.  1825,  (JJi.  Sand/'ord,  JV.  Y.,  Snowden  /;. 
Noah,  IJopJclns  Ch.  347. 

§  892.  Plaintiff  acquired  from  defendant  the  right 
to  publish  at  the  city  of  New  York  "  T/ie  Xatio^xil 
Adrocate."'  Defendant  subsequently  published  at 
said  city  "  TJte  JVew  YorJc  Naliondl  Adrocafcy 
Held.,  that  there  was  such  a  difference  as  to  warrant 
the  court  in  refusing  an  injunction  to  lestiain  de- 
fendant. That  wh(!i'e  there  is  so  great  a  diff'eience 
as  to  afford  room  for  reasonable  doubt,  a  court  of 
equity  will  not  interfere  l)y  injunction,  l)ut  will 
leave  the  parties  to  their  remedy  at  law.     Ibid, 


h: 


I  ^\ 


314       [Weios-]      Public  ATiox--^.        [papers,] 

§  89:?.    Tlie  name  of  a  newspaper  is  tlie  proper 
subject  of  propejly,  and  may  be  a  trademark.    I  hid, 

^  894.  One  wiio  assumes  tlie  name  of  anotlier  s 
newspaper  for  the  fraudulent  jMirpose  of  imposing 
upon  the  public,  and  of  supx)lanting  him  in  the 
good  will  of  his  paper,  may  be  restrained.  1840, 
Ch.  WalworUt,  N.  F.,  Bell  v.  Locke,  8  Pdif/c,  7i). 

§  80.").  To  entitle  the  complainant  to  the  inter- 
position of  the  court  of  chancery  to  restrain  the  use 
by  defendant  of  the  name  of  coniphiinant"s  news- 
paper, the  name  of  the  complainant's  jyaper  must  be 
used  in  such  a  manner  as  to  be  calculated  to  de- 
ceive or  mislead  the  public,  and  to  induce  them  to 
siqipose  that  tlie  i)aper  x^rinted  bj-  the  defendant  is 
the  same  as  that  which  was  previously  being  i)ub- 
lished  by  tlie  complainant ;  and  thus  to  injure  the 
circulation  thereof.     lb  id. 

>^  800.  Jfeld,  that  the  name  "  Mrw  Bra  ''  was  not 
jsuificiently  assimilated  to  the  name  "  DcmocratlG 
liepnbUcdii  New  Era,^''  the  type  and  other  iiivi- 
dents  being  dissimilar,  to  entitle  i)laintiif,  the 
owner  of  the  latter,  to  an  injunction.     1  bid. 

^  807.  The  i)laintiff,  C.  (i.  P.,  became  by  pur- 
chase in  February,  1850,  the  proprietor  of  a  weekly 
newspaper  called  "The  Britannia,"  which  he  sub- 
sequently incorporated  with  anotlier  newspaper 
called  "The  John  Bull,"  and  issued  the  publica- 
tion under  the  title  of  "  The  John  Bull  and  Britan- 
nia." 'I'lie  plaintilf  had  not  registered  his  name  at 
tlie  stamp  office,  under  the  act  for  that  purpose,  as 
the  proprietor  for  either  newspaper.  On  April  12, 
a  notice  was  inserted  in  "The  Britannia"  to  the 
effect  that  the  paper  would  be  united  with  "The 
John  Bull."  On  April  19,  the  defendant  J.  M., 
who  had  been  the  printer  and  publisher  of  "  The 


[jVcws-]  PiniLiCATioxs.     [papfir.s-.]     ol5 


Britannia,'"  issued  a  publication  railed  the  '"True 
Britannia,"  in  imitation  and  as  a  continuMtion  of 
"The  Britannia."  The  bill  was  tiled  against  the 
defendant  as  the  pi-oprietor  of  the  new  ne\v.sp;)pei"  to 
restrain  him  from  pablishini^  it.  The  def(>ndant  in 
his  affidavit  said  that  A  B  was  tlie  reij;istei'e(l  pro- 
prietor of  the  "  True  Britannia,"  aiid  that  he  was 
the  i)rinter  and  publisher  only,  Ou  motion  for  an 
injunction,  the  court  ordered  the  deleudant  to  be 
restrained  from  printing  and  publishing,  &c.,  the 
"True  Biitannia,"  or  any  other  newspaper  as  a 
continuation  of  "The  Britannia."  IS.IO,  Vice  Ok. 
i^luart,  Prowett  v.  Mortimer,  '2  Juri.sl  (J'.  1^.) 
414. 

^  81)8.  The  registered  pi'oprietors  of  "Bell's 
Life  in  London  and  Sporting  Ciironich?,""  piiblislnHJ 
weekly,  at  the  price  of  iive  pence,  iiled  a  bill 
against  tlie  proprietors  and  publishers  of  a  new 
newspaper  called  "The  Penny  Bell's  Life  and 
Sporting  Xews,"  anil  which  was  published  at  the 
price  of  one  penny.  The  evidence  pioduced  showed 
that  from  tlie  similaritvof  the  two  names,  mistakes 
had  occurred,  and  were  likely  to  occui,  on  the  pait 
of  the  public,  antl  that  incpiiries  hail  been  made  at 
the  office  of  "Bell's  Lii".'  in  Lond(m"  for  "The 
Penny  Bell's  Life."  On  motion  on  behalf  of  the 
plaintilTs,  the  court  granted  an  injunction  to  re- 
stniin  the  defendants  from  the  us(^  of  the  words 
"Bell's  Life"  in  the  title  of  theii-  newspaper. 
1859,  Vice  Ch.  ^Slu^art,  Clement  v.  M:iddick,  f) 
Jurld  {X.  kS.)  592;  S.  C,  1  (J//.  98. 

§  899.  Li  October,  1857,  A  being  the  proprietor  of 
a v/eekly  publi(;ation called  "The  London .lonrnal," 
the  price  of  which  was  one  penny,  assigned  his  copy- 
right and  interest  therein  to  B  for  value,  and  en- 


*%'  ■#■!  K&  f         m 


w 


m 


'i 


i  '}' 


%■ 


■V 


'I' 

.,1 


ii  -Wi: 


310       [iVe«o.9-]      Publications.        [papers.] 

tered  into  a  covenaiii,  with  B  not  to  publish,  eithir 
alone  or  in  pMrtiiersliip  witli  iiny  other  porson,  any 
weekly  |)erio(lical  ol'  a  iiatiirt?  similar  to  "  TJie  Lon- 
don Jonrnal."  In  May,  18.")9,  A  issued  an  adver- 
tisement, announcini^  tlu;  piiblieation  by  him  on 
June  1,  following,  of  a  daily  nowspap-Mv  to  be 
called  "The  Daily  London  Journal."'  The  order 
for  an  injunction  against  A  restraining  his  publica- 
ti<<n  was  aflirmed  on  appeal,  upon  B  undertaking 
to  abide  by  any  order  the  court  might  make  as  to 
damagv^s  and  to  bring  an  action  against  A  within 
one  week.  18j0,  Ok.  01.  of  Appeal,  L.  J.  J.,  In- 
gram «.  StifT,  5  Jurist  {N.  k)  947. 

§  000.  The  law  of  trademarks  is  applicable  to 
newsixipers.  18G7,  A'.  Y.  Com.  Pleas,  /S'.  T.,  Mat- 
sell  i\  Flanagan,  2  Ahh.  Pr.  {X.  S.)  4.10. 

§  001.  The  courts  in  exercising  their  i)ower  to 
restrain  thf"  use  of  another's  trademark,  do  not  con- 
iine  their  iuterforence  to  names,  symbols,  marks, 
or  designs  originating  with  the  jierson  lirst  using 
them.  The  enforcement  of  the  doctrine  that  trade- 
marks shall  not  be  sim  ulated  does  not  dei)end  entii-ely 
upon  the  alleged  invasion  of  individual  rights,  but 
as  well  upon  the  broad  principle,  that  the  public 
are  entitled  to  protection  from  the  use  of  pi-eviously 
api)ropriated  names  or  symbols  in  such  manner  as 
to  deceive  them,  by  inducing  or  leading  to  the  pur- 
chaser of  one  thing  another.  It  is  not  necessary  to 
the  exercise  of  judicial  powers  that  the  plaintiffs 
sliould  have  any  other  prox)erty  in  the  name  used 
tiian  that  possess(^d  by  any  other  person.  The  em- 
ployment of  words  or  names  in  common  use  may 
be  adopted  by  various  persons  in  the  same  business, 
employment  or  manufacture,  in  competition  of  trade 
or  business,  and  be  encouraged  by  all  the  attributes 


i 


[JVeics-]         Publications,     [papers.]     317 

of  courts  and  conimnnitios,  but  sncli  uso  rnnst  bo 
independent  nnd  free  IVoni  the  (']:;i)',i;-e  of  d(M'eitriil 
simuhition.  llenee,  -wliere  the  i)Iiiiiitil'i'.s  liud  \()U^ 
published  a  ne\vs])a]i(M'  entith-d  ••Tlie  iS'jdional 
Police  Gazette"'  and  the  del'enchiiit  Iherea'rtci- pub- 
lished a  paju'i'  entitled  the ''United  Stales  l\)!iee 
Gazette"  and  printed  in  a  \v;iy  acliiMlly  to  (h'ceivc; 
pureliaseisand  readers,the  latter  WMscnjolued.  Jh/'d. 

§  002.  The  pi'inciph^s  upon  which  equity  enjoins 
a  defendant  from  iinitntint,^  tho  plaintiirs  trade- 
marks do  not  ai»ply  to  the  i)ublic;ition  of  news- 
I)apers,  except  so  far  as  to  protect  tlie  pi-oprietor 
of  a  paper  in  the  use  of  the  name  adopted  by  him 
for  such  paper.  1808,  K.  Y.  Suprrior  (U.  k  T., 
Stephens  v.  De  Conto,  4  Abb.  Pr.  (^\  >S\)  47;  S. 
C,  7  Ilohertson,  34:3. 

g  903.  If,  in  an  action  brouglit  to  i-esti'iiin  tlie 
publication  of  deTendant's  newspaper,  n])()n  the 
ground  tliat  ho  j,s  infrinp,in^'  trademarks  adopted 
by  the  plaintiif  in  the  pid)lication  of  a  newspaper 
previously  established,  it  apjieais  tliat  the  names 
of  the  two  papers  are  so  dili'erent,  that,  considering 
the  dissimilarity  of  type  and  general  appeai-ance, 
one  is  not  liable  to  be  mistaken  foi'  tlie  other,  no 
injunction  can  be  granted.     Ibid. 

§  004.  The  right  of  jn-operty  in  what  is  com- 
monly denominated  the  "good  will"  has  never  been 
protected,  except  where  it  had  been  made  the  subject 
of  some  express  covenant  between  tlie  i)arties.  It 
may  be  sold  by  private  agr(!ement,  'ind  the  stipula- 
tion of  the  parties  in  respect  to  it  will  be  enl'oi'ced; 
but  in  the  absence  of  any  covennnt,  and  on  a  i)ur- 
chase  at  an  involuntary  sale,  the  vendee  is  not  sub- 
rogated to  all  the  rights  of  the  original  owner. 
Hence  it  would  seem  to  follow  that  where  a  public 


It'-  "\ 


WfP" 


%' 


318       [News-]       PuHLiCATiONs.         [papers.] 

administrator  soils  at  i)iibli(!  auction  tho  ri;:iht,  fitlo 
and  interest  wliicrh  a  decedent  hnd  in  his  liferinK^  in 
a  newsjKiper,  incliidini^  the  good  will  theicof,  the 
pnrchaser  would  not  acquire  such  a  right  of  pi'op- 
erty  in  the  name  oi"  title  of  tho  newspaper,  as  would 
])revent  the  same  name  being  assumed  afterward 
by  anothej'  ])ei'son.     //y/V/. 

^  1)0.").  The  proprietors  of  a  long  established 
weekly  conuc  peri(jdical  called  "Punch"  moved  to 
restrain  the  [)ublication  of  •"Punch  and  Judy,"  a 
rival  poriodit'al  of  like  chaiacter,  and  of  the  same 
size  as  and  somewhat  similar  in  appearance  to 
"Punch,"  but  with  a  dilTerent  illustration  on  the 
cover  and  sold  at  a  less  i)rice.  It  was  in  evidence  that 
another  well  known  comic  periodical  was  i)ublislied 
weekly  under  the  name  of  "Judy"  :  JlcM,  that 
the  adoption  of  the  whole  title,  Pun(!li  and  Judy, 
was  no  infi'ingement  of  tlie  plaintiff's  right  to  use 
and  property  in,  the  name  Punch  ;  and  that  the 
general  public  were  not  likeh'  to  bo  misled  into  pur- 
chasing the  defendant's  publication  by  nustake  for 
that  of  the  plaintiffs.  And  the  motion  for  injunc- 
tion was  ]-efused — without  costs.  1809,  Vice  Ch. 
3Iali)is^  Bradbury  v.  Beeton,  30  Law  Jour.  II.  {N. 
S.)  Ch.  57  ;  S.  C,  21  L.  T.  R.  {N.  S.)  323  ;  S.  C, 
18  W.  E.  33. 

§  900.  The  class  of  persons  to  be  considered  in 
trademark  cases  are  those  of  common  intelligence 
and  observation.  The  court  Avill  not  interfere  for  the 
sake  of  heedless  people  who  linow  not,  or  will  not 
take  the  trouble  to  see,  what  they  are  purchasing. 
Ihid. 

%  907.  A  court  of  equity  will  protect  a  person  in 
the  use  of  a  trademark,  such  as  the  name  of  a  new^s- 
paper,  although  the  name  adopted  is  one  that  be- 


I  -  *}-•  ■ 


PuFFKiiY  — Qr AC K  M i:i)r<  i x i;s. 


319 


longs  to  the  laiif^iiii.i^a"  of  fix'  ('<)mitiy.  tiiid  ni:iy  ho 
employed  in  any  way,  or  Cor  any  purpose,  whirli 
will  not  (Iffraiid  individuals  or  deceive  the  jmhlic. 
1870,  N.  Y.  Sffpn'/,/r  ('/.  S.  7'.,  American  (li-ocei- 
Publisldng  Association  t\  (ii-ocer  Piil)lisliing('o.,  ;")! 
Ilou\  Pr.  402. 

^  008.  A  newspaper  estaMisliment  is  a  subject  of 
proppi'ty  and  of  i'ontract,  and  tlie  liglit  to  it  may  he 
jirotected  by  a  court  of  ecpiity,  and  a  person  who 
sells  such  an  establislinieni  has  no  riglit  to  continue 
a  publication  as  the  same,  but  he  may  set  up  a  dif- 
ferent rival  paper.  If  the  (piestion  whether  the 
rival  paper  is  the  same  or  dilferent  be  doubtful, 
that  doubt  is  a  sufficient  reason  to  refuse  an  injunc- 
tion and  to  leave  the  parties  to  their  remedies  at 
law.     Ibid. 

%  909.  If  it  appears  that  the  defendant's  paper  is 
an  imitation  or  simulation  of  th(^  plaintiffs'  paper, 
and  as  such  designed  to  nuslead  the  public,  an  in- 
junction will  be  granted.     I  bid. 


PUFFERY. 


See  MiSREPRESENTATIOX. 


PURCHASE. 


See  Assignment. 


QUACK  MEDICINES. 
See  Misrepresentation. 


\  .i.\ 


i   ;> 


320   Quality— Questions  of  Law  and  of  Fact. 


m 


* 


I  I: 


QUxVLITY. 

§  912.  The  owner  of  a  trademark  is  entitled  to  re- 
cover daninges  for  its  violation  notwitlistaiidliig- 
tlint  the  goods  upon  which  the  simulated  nmrk  is 
placed  nre  not  inferior  in  quality.  18;]l),  Kliuf  a 
Bench,  ]51olield  i).  Payne,  1  N.  &M.  :jr):j ;  S.  (;.',  4 
B.  &  Ad.  410 ;  S.  C,  3  L.  J  11.  (iY.  8.)  08. 

§  9i:}.  It  is  no  answer  to  ,i,  snit  for  the  violation 
of  a  trademark  that  the  simulated  article  is  equal 
in  quality  to  the  genuine.  184."),  Vice  Ch.  ^^niid- 
ford,  N.  r.,  Coats?).  Ilolbi-ook,  2  Scuidf.  Ch.  n80  ; 
S.  C,  3  N.  Y.  Leg.  Ohs.  404. 

^  014.  It  is  wholly  immatei'ial  whether  the  simu- 
lated article  manufactured  bv  the  defendant  is  or 
is  not  of  equal  goodness  and  value  to  the  real 
article  manufactured  and  put  up  for  sale  by  th(^ 
complainant.  1840,  X.  V.  I'l.  of  Errors, 'WxyUn-  t^. 
Carpenter,  11  Palr/e,  202;  S.  C,  2  Hand/-  ^'f'-  ^'^^^•"■ 

%  91.").  It  is  of  no  importance  that  the  manufac- 
ture of  the  defendants  is  of  equal  or  even  suptM'ior 
quality  to  that  of  the  plaintitFs;  they  have  never- 
theless no  right  to  ur.e  the  hitter's  trademark,  or  to 
make  and  use  any  imitation  of  it  to  help  or  increase 
their  trade  in  the  article.  1872,  N.  Y.  S/tperhr  CL 
S.  T.,  Cook  V.  Starkweather,  153  AbO.  Pr.  JV.  8.  392. 

For  words  denoting  quality  see  DKseurPTiVK 
Name,  §  C40,  et  scq.;  and  Woi'.ns,  §  1010,  et  seq. 


QUESTIONS   OF   FACT   AND    OF   LAW. 


P 
'% 

m 


§  920.     In  an  action  on  the  case  brought  for  imi- 
tating the  plaintiff's  trademark;  held.,  that  it  was 


'■''& 


Questions  of  Laav  and  of  Fact. 


321 


properly  left  to  the  jury  to  say,  first,  wlioMier  there 
wus,  in  fact,  so  clos*'  a.  r<'S(MHl)Ianc(;  in  t]u)  marks 
used,  as  would  dofeivc;  [x'rsons  of  ordinary  skill  ; 
and,  secondly,  whether  (he  (h'fendants  used  tlie 
mark  with  the  intention  of  supplan(in:jf  ihe  plain- 
tiiT,  or  wii(!thor  it  was  done  in  the  ordinary  course  of 
business  in  execution  of  oi'diM's.  184?.  (^onrt  of 
Com. 
a")?;  S.  C,  II   L.  .J.  n.  {('.  P.)  :5()l 


Plras,   Crawsliay  r.   'I'honipson,  4  M.  &  d 


ind  see  llod- 
gers  t).  Nowill,  17  L.  J.  U.  {X.  K)  C.  P.  :>2. 

^  021.  Where  the  ])laintifT  used  the  woids 
*'  Roger  Williams  Louij;-  Clolh,"  upon  cotton  cloths 
as  a  trademark,  and  the  defendant  used  the  woids 
"Roger  Williams"'  upon  cotton  cloths:  J/r/f/^ 
that  the  court  could  not,  as  matter  of  law,  decide 
that  such  partial  use  of  the  designation  of  his 
goods  appropriated  by  the  plaint  iff  was  noL  de- 
signed, calculated  and  effectual  to  carry  out  the 
fraud  charged,  and  must  leave  that  to  be  settled 
upon  the  evidence  by  the  jury.  1800,  i^i/prciix'.  Ct. 
of  n.  /.,  Barrows  ?\^Knigiit.  0  A'.  /.  4;',4. 

§  922.  The  first  question  which  ai'is(»s  in  trade- 
mark cases  is  one  of  fact,  and  is,  wlu^thei-  the  mark 
used  by  the  defendant  is  a  colorable  imitation  of  a 
genuine  trademai'k  of  the  j»laintiff^  That  is  a 
question  to  be  determined  at  law  by  a  jury,  and  in 
equity  by  the  judge.  If  it  be  found  (hat  the  trad*;- 
mark  used  bv  tlie  defendants  is  not  a  colorable 
imitaticm  of  the  genuine  mark,  tlie  whole  (liing  is 
at  an  end  ;  there  is  no  imitation,  and  the  person  may 
go  on  using  it.  18(52,  Bolh  Courts  Cartier  v.  Car- 
lisle, J3l  Beat).  202  ;  S.  C,  8  Jurist  (iV.  S.)  183. 

See  also  Evidence. 


21 


322 


Registration — R?:medies. 


REGISTRATION. 

Registration  of   trademarks,  see   Statutes   (Con- 
struction of),  and  §  295. 


REGISTRATION   OF  PRINTS  AND  LABET^? 

§  923.  The  act  of  Congress  of  June  18,  1874,  is 
to  be  regarded  as  an  amendment  of  the  copyriglit 
laws.  To  acquire  a  copyriglit  in  any  print  or 
label  deposited  in  the  patent  olfice,  it  is  essential 
that  the  title  of  the  print  or  label  be  first  deposited 
in  pursuance  of  the  provision  of  the  U.  S.  Revised 
Statutes  concerning  copj'rights.  1877,  U.  S.  Cir- 
cuit C/.,  i^outhern  Di.sf.  of  i\>?o  Yor/i\  Marsh  «. 
Warren,  4  Aju.  L.  T.  11.  (n.  8.)  12G. 


*■ 


I 


REMEDIES. 

§  928.  An  action  on  the  case  for  the  violation  of 
a  trademark  may  be  maintained  without  proof  of 
special  damage.  1837,  Sup.  JucVl  Ct.  of  3Tasfi., 
Thomson  i^.  Winchester,  19  Pick.  214. 

§  929.  An  acticm  on  the  case  may  be  maintai ued })y 
a  manufacturer  against  another  manufactur«M' who 
marks  iiis  goods  with  tluOvuown  and  accustomed 
mark  of  the  plaintiff,  where  the  marlv  used  by  the  de- 
fendant resembles  the  plaintiffs  mark  so  closely  as 
to  be  calculated  to  deceive, and  as  to  induce  persons  to 
believe  the  defendant's  goods  to  be  of  the  plaintiffs 
manufacture—and  the  defendant  uses  sncli  mark 
with  intent  to  deceive — and  sells  the  goods  so  marked. 


"Remkdtks. 


323 


(CoN- 


m' 


as  and  for  floods  of  the  plaintiff's  nianufacture  ;  and 
proof  of  special  daraau;e  is  not   necfvssary.     18-17, 
Ilod.^ers  r.  Nowill,  11  Juris'/,  1037;  S.  (1,  o  C.  B. 
iMan.  Or.  ct:  *S'.)  100  ;  S.  C,   17  L.  J.  R.  {X.  S.)  V. 
P.  .02.     And  see  S.  C,  0  Han,  32.-). 

>^  !):]().  The  violation  of  a  trademark  will  be  en- 
joined .md  the  party  viola.tini;-  may  be  c/nipelled 
to  produce  the  articles  to  which  the  spurious 
l)i-ands  are  attached,  to  the  end  tliat  such  brands 
may  be  canceU'd  or  erased,  at  the  cost  and  ex[)ense 
of  the  defendant.  18G2,  N.  Y.  CI.  of  Cum-.  PIcafi, 
X     J'.,    Jnrgensen    i).    Alexander,    21    IIoio.    Pr. 

2(;9. 

j5  031.  An  injunction  was  obtained  to  restrain 
I  he  defendants,  who  were  wharlin^t.n's,  from  ])ar(- 
inii'  with  ceitain  u;()ods,  on  the  ,jj;round  th;it  they 
had  been  imported  with  counterfeit  trademarks. 
r,  wlio  was  not  a  ])arty  .o  the  suit,  had  bona  fide 
advanced  nionev  before  bill  tiled,  on  I  he  secui-itv  of 
the  dock  wai-rants.  Tpon  ruotion  by  r,  pro  in/cr- 
r.v.sv  .sv/o  .■  Ill-Id,  that  he  had  a  pihu'ity,  in  res[)ect 
to  his  advance,  over  the  plaintiffs"  costs  of  suit,  he 
niulertakiuu'  to  destroy  th(»  counterfeit  marks  and 
paying  the  costs  of  the  motion.  That  the  whar- 
fingers' chai'ges  and  costs  of  suit  were  the  jirst 
charges  upon  th(^  goods;  U  to  ])ay  these  costs  and 
add  them  to  his  advance,  and  the  total  to  form  (he 
second  chr.rge  ;  the  plaintiff's  costs  (»f  suit  to  be  tlie 
third  charge.  ISiil,  RoUa  CV.,  Poiisardin  r.  Peto, 
33  Ih(((\  642;  S.  C,  10  Jnri.st  (X  X.j  (5;  S.  (..'., 
12  W.  P.  11)8;  S.  C,  33  L.  J.  U.  {NX.)  ('//. 
371. 

^  932.  S,  liaving  engaged  in  the  manufacture  (»f 
various  medicines  and  other  preparations  adopted 
and  nsed  thei'eon  certain  labels  and  trademarks,  to 


^24 


Resemblance — Secret, 


imm 

'h 

.tjI^^H 

■ 

:  kI^^^H 

,lflH 

1 

'f^M^H 

*         ' 

f^^^M 

i 

distinfjiiish.  his  medicines  and  preparations  from  all 
others.  These  hibels  iind  trademarks  were  gener- 
ally known  to  the  trade  and  consumers,  so  that  by 
them  the  preparations  were  distinguished,  recog- 
nized and  bought.  The  manufacture  and  sale  of 
these  preparations  had  become  the  source  of  profit 
and  emolument  to  S.  Certain  persons  thereupon 
fraud ulentlv^  engaged  in  the  manufacture  of  medi- 
cines  and  other  preparations  and  sold  large  quanti- 
ties thoieof,  with  labels  and  trademarks  corres- 
ponding wjth  those  used  by  S,  or  with  only  a  color- 
able difference,  and  designed  to  deceive  the  public, 
and  to  enable  the  vendors  to  obtain  for  their  medi- 
cines tlie  celebrity  which  the  medicines  and  prepar- 
ations of  S  had  in  the  P'arket.  On  application  by 
S  it  was  Held:  that  he  v.as  entitled  to  be  protected 
by  injunction  and  to  be  compensated  by  having  an 
account  taken.  1870,  Mar  viand  Court  of  Ap- 
peals, Stonebreaker  v.  Stonebreaker,  33  Md.  252. 

See  also    Contempt  ;    Injunction  ;    Statutes, 
Construction  of. 


RESEMBLANCE. 


See  Imitation. 


SECRET. 


See  Trade  Secret. 


Scienter — Signs. 


325 


SCIENTER. 
See  Intent. 


SIGNS. 


§  940.  A  sign  containing  a  lirrn  name  used  over 
the  doorway  of  a  store  may  be  tlie  snbj(H;t  of  a 
trademark.  1857,  jY.  Y.  l^iipn'iue  Ct.  >S.  T.,  Peter- 
son w.  Ilumplirey,  4  A/)b.  Pr.  394. 

§  941.  Tile  plaintiff,  a  son  and  former  partner 
of  Jolin  liiirgess,  manufactured  and  sold  for  many 
years  "Burgess's  essence  of  anchovies"  at  No. 
107  Slra/id ;  and  carried  on  business  theiv,  after  the 
death  of  liis  father,  under  the  style  of  John  Burge.ss 
&  Son,  which  had  been  used  lu-eviously  to  his  father's 
death.  Tlie  defendant,  W.  II.  Burgess  (a  son  of 
the  plaintiff),  who  liad  been  employed  for  mauy 
years  by  the  plaintiff  and  had  l)een  permitted  to 
reside  on  the  premises  No.  107  Strand,  o])ened  a 
house  in  King  William  street,  and  had  letters  and 
figures  over  his  sliop  front,  as  follows  ;  on  one 
window  "\V.  11.  Burgess,''  on  the  othei-  window 
'' 107  Strand,"  and  in  tlie  intermediate  spac(^  over 
the  fanlight,  ''late  of."  Tin;  defendant  was 
enjoined  from  tlie  use  of  the  woi-ds  ''  107  Strand," 
"late  of,"  and  also  from  continuing  a  i)late  which 
he  had  on  the  sides  t)f  his  shop  do(»r  with  the 
words  "Burgess'  Fish  Sauce  W^arehouse,  lat(!i  of 
107  Strand;  "but  was  not  enjoined  from  using  the 
wortls  "Bury-ess's  essence  of  anehxnies"  on  the 
article  sold  by  him.  ISo;*,  Il/{//t  (U.  of  (' /idnrrj-y. 
Bur^^ess  i\  Burgess,  '6    De  (J.  M.  d'-  (J.  890 :  S.  C., 


..i>>..  a 


T'WPP'WPJW'r'i'T 


326 


Signs. 


17  Jar.  292  ;  S.  C,  22  Law   Jour.  11.  {N.  S.)  Cli. 
675  ;  S.  C,  17  Enri.  L.  d;  Eq.  2r)7. 

§  942.  Where  Smith,  a  tradesman,  who  liad 
been  in  the  eniphty  of  a  large  lirm,  put  his  own 
name  over  his  shop,  but  on  the  plates  under  the 
shop  windows,  and  on  tlie  sun  awning  "i'roni 
Thresher  &  Ulenny,"  his  former  employers;  the 
word  "IVom"  being  much  small  than  the  woi'ds, 
"Thresher  &  Glenny,"  and  it  was  i)roved  that 
some  persons  liad  bern  misled  into  thinking  that 
the  shoji  was  the  shop  of  '■'Thresher  ct  Olenny :" 
The  court  Held.,  that  what  Smith  was  doing,  was 
calculated  to  mislead  the  incautious,  unwary  and 
heedless  portion  of  the  pu'olic ;  and  on  bill  by 
Thresher  &:  (ilenny,  granted  an  injunction  n^strain- 
ing  him  from  using  the  name  of  their  lirm  about  his 
shop  in  such  a  way  as  to  mislead  the  public  into 
the  belief  that  his  shop  was  the  shoj)  of  Thresher 
&  Glennv,  or  that  their  business  was  carried  on 
there.  180o,  Vice  V It.  Klnderslci/.,  Glenny  o.  Smitli, 
11  Jurist  {N.  S.)  904;  S.  C,  VS  L.  T.  It.  {N.  *V.) 
11;  S.  C,  2  Dr.  ct  .S///.  470;  S.  C,  0  Ncld  R. 
363. 

§  94;j.  There  is  no  question  but  that  if  a  man. 
having  been  in  the  employment  of  a  iirm  of  reputa- 
tion, sets  up  in  business  for  himself,  he  has  a  right 
in  any  way  in  whi(;h  he  thinks  lit  (prcjvided  he  does 
not  use  names,  marks,  letters  or  other  Indicia  by 
which  he  may  induce  purchasers  to  believe  that  the 
goods  which  he  is  selling  are  those  of  another 
person),  to  inform  the  j^ublic  that  he  has  l>een  in 
such  employment,  and  in  that  way  to  apj)ropriate 
to  liimself  some  of  the  beneiit  arising  from  the 
reputation  of  his  former  eniployeis.  J3ut  in  so 
doing  he  must  take  especial  caie  ih-Jl  it  is  done  in 


i'i 


Signs. 


327 


siicli  ji  way  as  not  to  mislead  the   public  to  the 
detriment  of  his  former  employers.     Ih'id. 

%  U4-1.  The  use  of  a  simulated  card,  advertisement, 
or  sign,  calculated  to  deceive  the  incautious  oi-  iiii- 
wary,  whereby  a  party  may  be  dei)rived  of  his  just 
gains  and  prolits,  will  be  restrained  by  injunction. 
Accordingly,  wliei'e  the  plaintilfs  sign  was  "Coiton 
Dental  Association,"  and  the  defendant,  a  former 
emploj'ee  of  the  i)laintilf,  used  cards  and  had  a  sign 
over  Ills  ollice  in  i'oi'm  following  :  J)r.  F.  \\.  Tliomas, 
late  operator  at  the  Colton  Dental  Rooms,  the  woids 
"late  operator  at"  in  small  letteis,  the  court  held 
the  cards  and  signs  to  be  deceptive,  and  compelled 
their  discontinuance,  until  changed.  1808,  (JI.  of 
Com.  Pieas^  Phil.  Pa.,  Colton  v.  Thomas,  2  linics. 

i  94.").  The  plaintiff  was  the  proprietor  of  an  oys- 
ter saloon,  A^o.  214  Broadway,  and  had  a  sign  over 
the  door  of  "The  Captains  Live  and  J^et  Live 
Oyster  and  Dining  Saloon."  Defendants  carried 
on  the  same  business  next  door  and  i)Ut  up  a  sign 
with  the  words  "  G.  \V.  Chadsey  &  Co"s.  Creat 
Eastern  Live  and  Let  Live  Dining  Saloon. '"  The 
defendants  were  enjoined  from  using  the  words 
"Live  and  Let  Live."  Genin  t.  Chadsey,  a  2s'ew 
York  case,  cited  in  2  Brew.s'.  IJtUJ. 

§  940.  The  parties  to  tlie  suit  were  severally  en- 
gaged in  selling  ready  made  clotliing.  They  occu- 
pied adjoining  rooms  in  the  same  block,  fronting 
on  the  same  street.  The  C(mi])lainant  caused  to  be 
put  up  on  the  wall  of  the  l)uildii!g.  over  the  enti'ance 
to  his  store,  the  words  "Mammoth  Wardrobe;" 
below  it  and  over  the  door,  his  name  in  large  gilt 
letters ;  on  toj)  of  the  building  a  sign  in  these 
words:     "  W.    N.    Gray's    Great    Wholesale    and 


■^=?B 


m 


328 


SiGXS. 


n:  )i 


R<  ill 


I;  iv 


Retail  Clotliing  Emporium;"  on  tli(^  windows 
on  eitlier  side  of  the  entrance,  other  words  indica- 
tive ol'  liis  business,  including  his  name  ;  he  also 
advertised  his  place  of  business  and  his  tiade  in 
the  local  news[)ai)ers  and  the  directory,  as  the 
"Mammoth  Wardi'obe,"  nniformly  connecting 
with  it  his  name  and  the  number  of  his  room. 
Subsequently  to  ccmiplaiuiint's  adoption  of  the 
words  "Mammoth  \V^ardrobe,"  defenclant  i^ainted 
the  same  words  on  an  jiwning  erected  over  the 
entrance  to  his  store,  and  below  them  his  name 
and  the  number  of  liis  room  ;  he  also  i)laced  liis 
name  in  large  gilt  letters  over  his  door  ;  and  above 
the  awning,  and  on  the  building,  below  the  awning 
jind  n(\ir  the  entrance,  a  card  displaying  "The 
Mammoth  Wardrobe,"  and  defendant's  name. 
Defendant  advertised  in  the  samc;  newspapers  and 
directory  as  complainant,  but  Avitliout  mentioning 
the  place  of  business  as  the  "Mammoth  Ward- 
robe." Complainant  applied  for  a  temporary  in- 
junction. Jfcld,  that  without  the  suggestion  of 
falsehood  or  suppiession  of  truth  in  woi-ds  or  acts, 
there  can  be  no  fraud.  That  even  if  the  words 
"  Mammoth  Wardrobe  "  were  sucli  that  tliev  might 
be  approi)riated  as  a  trademark  by  having  lirst  been 
arbitrarily  applied  by  comi)lainant,  they  not 
being  an  appiopiiate  term  according  to  general 
usage  to  describe  such  a  place,  still  great  doubt 
might  be  entertained  whether  the  defendant  had 
not  by  the  addition  of  his  name,  number  and  other 
mtu'ks,  so  distinguished  the  designation  of  his  es- 
tablishment from  that  of  the  conii)lainant,  that 
though  each  was  called  the  "Mammoth  Ward- 
robe," they  were  not  identical  or  so  nearly  so  as  to 
require  close  insj)ection   to  detect   the  dilTerence. 


I'   I 


SiGXS. 


;]20 


The  court  could  not  see  how  any  person  could  fail 
to  recognize  the  two  establishnients  ;  that  it  was 
ditKcult  to  believe  that  any  customers  atti'actcd  by 
tiie  advertisements,  and  guided  by  llieiu  and  seeing 
the  two  stores,  or  only  the  defendant's,  could  make 
any  nnsiake.  Ai)i)lication  denied.  1871,  MIl'Jl. 
iJlrc.  (11.,  (jiay  d.  Kocli,  2  JZ/V-A.  N.  P.  110. 

^  047.  Joseph  Hall  liad  been  engaged  in  tlie  man- 
ufacture and  sale  of  tiirashing  machines  at  No.  10 
Water  stieet,  in  the  city  of  lloch(}st(>r,  and  put  n[) 
a  sign  with  No.  10  upon  it,  and  his  shop  was  kninvn 
by  that  numbei".  On  the  death  of  said  Hall,  in  the 
Spring  of  18j0,  the  premises  and  properly  of  said 
Hall  were  sold  bv  his  exe(!Utors  to  the  derendant, 
who  continued  the  business  at  the  same  ])hice,  aijd 
designated  his  place  of  business  as  "Old  Joseph 
HalFs  Agricultural  \V(n'ks,  No.  10  South  Water 
St."  The  plaintilf,  prior  to  \\\o.  Fall  of  ISO,),  eanied 
on  the  business  (jf  manul'aetui'ing  agri(.'ulim'al  imple- 
ments at  Ih-ighton,  souk^  two  and  a  Inilf  miles  from 
Rochester,  in  the  Kail  of  1800  they  i-ented  a  small 
olhce  on  South  Water  stri^et,  near  to  defendant's 
shop;  and,  with  intent  to  injure  defendant,  [>iit  on 
the  store  the  v;ords  and  ligures  ''No.  10,"'  thereby 
indicating  their  place  of  business  as  being  "'No. 
10"  South  Water  street.  The  number  was  i»ut 
upon  the  implements  manufactured  l)y  them.  The 
plaintilf  was  restrained  from  using  said  number  as 
its  trademark,  or  keeping  the  same  on  its  olhce  or 
building  in  South  Water  street,  or  using  it  in  any 
way  in  imitation  of  the  defendant's  trademark. 
1874,  jy.  Y.  VonimiHHion,  of  Appcdl^i,  (ilea  and 
Hall  Manufacturing  (Jo.  w.  Hall,  01  K.  Y.  220;  re- 
versing S.  C,  0  La  us.  108. 

§  048.     Where  one  has  established  a  business  at 


f  i 


M 


''tr. 


.130 


Signs. 


w 


a  particnlnr  place,  from  whioh  he  has  or  may  de- 
rive profit,  and  lias  attached  to  such  business  a 
naniM  indicating-  to  tli<'  public  where  it  is  carried  on, 
he  thereby  accpun^s  property  in  the  name,  which 
will  be  i)r()tect«'(l  I'rom  invasion  by  a  court  of  ecpiily 
on  principles  anahi^ous  to  those  in  case  of  the  in- 
vasion of  a  ti-adcmark.     /  f^/fl. 

)J  1)49,  The  plaintiffs  comi)osed  the  Jirm  of  Devlin 
&  Co.,  enL!;a <;•('(  1  in  the  clothing  business  in  Broad- 
way, New  York.  The  (hd'endant,  whose  name  was 
Jolm  8.  Devlin,  was  engaged  in  the  same  business 
and  in  the  same  street,  and  had  upon  his  [)lace  of 
business  a  sign  Avith  the  words  "Devlin  &  Co." 
thereon.  The  use  of  the  woids  "«fc  (yo."  by  defen- 
dant was  found  by  the  court  to  be  the  use  of  a  d(!- 
libcrate  falsehood  to  attract  the  plaintiifs"  custom, 
and  li(^  was  enjoined  from  using  tlie  firm  name 
"  Devlin  &  Co."  in  any  manner,  and  in  the  injunc- 
tion it  was  fui'ther  ordered  "that  the  said  John  S. 
Devlin  be,  and  he  is  hereby  confined — whenever  the 
word  or  woixls  'Devlin'  appears  or  is  used  in  his 
advertisements,  signs,  placai'ds,  slips,  or  other  means 
and  modes  of  making  known  his  bursiness  or  i)lace 
of  business,  or  offering  for  sale  or  selling  his  goods, 
wares  and  mei'chandise — to  his  own  proper  Chris- 
tian, middle  and  surname,  conjoined  and  without 
mono.<i"i'ams,  signs,  or  other  devices  which  mav  tend 
to  mislead  or  induce  the  public  or  any  other  person 
as  aforesaid  ;  and  it  is  further  ordered  that  llie  said 
.John  S.  Devlin  be  confined  to  the  use  of  his  own 
name— John  S.  Devlin  or  J.  S.  Devlin — without  the 
use  of  any  monogram  containing  the  initials  J.  S.  or 
other  device  ;  but  nothing  herein  is  to  be  construed 
or  intei[)reted as  pieventing  the  said  defendant  frcmi 
using  his  own  name  in  liis  advertisements,  signs  or 


fell 


ll-*i 


Statutes  (Coxstuuctiox  or). 


331 


pUirairls."  Siibseiiuontly  to  said  injnnclioii  tlif?  do- 
f<>mlanf  iiiadci  use  of  a  si<>-ii  coutainiiii!;  the  nn?nl)er 
of  his  store  and  thewoi-ds  ".I,  S.  Devlin's  Clothiii,!;'"' 
so  arraii,u,"('d  as  to  atti'act  and  lix  th(^  publiiM'Ve  on 
ihe  words  "  Devlin's  Clothln,^'."  The  coui-t  ad- 
jud,t:;e(l  the  (hd'endant  in  contempt  I'oi*  violating"  said 
injunction.  IST."),  N.  V.  Suprcine  (!(.  (i.  T.,  Dev- 
lin 0.  Devlin,  4  llmi^  0.")!  ;  S.  (J.,  alliinied  by  N.  Y. 
Ct.  of  A2)jjc'als,  not  yet  reported. 

See  also  Buildinos,  and  §§  124, 125  and  1023 ;  also 
Partnkesuip. 


STAT UTES—CON STR UCTIOX  OF. 


§  957.  The  stjitute  of  1845,  making  it  a  penal 
offense  to  vend  merchandise,  having  thereon  foigvd 
or  counterfeited  trademarks,  knowing  tlicMii  to  be 
such,  &G.,  without  disclosing  tiie  fact  to  tiie  i)ur- 
chaser,  would  prevent  the  vendor  IVom  recovering 
tlie  price  of  the  goods  sold,  if  he  knew  that  the 
marks  were  forged  or  counterfeited.  But  it  must 
appear  that  the  vendor  had  su(,'h  knowledge  or  that 
there  wasa  warranty  of  the  genuineness  of  the  goods, 
or  some  re[)resentation  on  his  part,  to  i)revent  a  re- 
covery. 1840,  iY.  Y.  Superior  Ct.,G.  21,  Kudderow 
V.  Huntington,  3  Saiirlf.  2.52. 

§  958.  In  Massachusetts  a  bill  in  equity  to  re- 
strain the  fraudident  use  of  trademarks  cannot  be 
maintained  under  St.  18.'52,  c.  197,  without  alleging 
and  jiroving  that  such  use  was  for  the  purpose  of 
falsely  representing  the  articles  so  marked  to  be 
manufactui-ed  by  the  plaintiff.  1854,  !:<Lip.  J acCl 
Cf.  of  Ma.s.s.,  Ames  v.  King,  2  (frai/,  :]79. 

^  959.     The  statute  of  1803,  of  the  State  of  Call- 


\^ 


IMAGE  EVALUATION 
TEST  TARGET  (MT-3) 


4^ 


// 


A 


^ 


1.0 


150     ^^"        ■■■ 

12.2 


I.I 


2.0 


11.25 


Hiotographic 

Sciences 

Corporation 


23  WeST  MAIN  STREET 

WEBSTER,  N.Y.  145S0 

(/16)S72-4S03 


.<i^ 


^ 


z 


^ 


\ 


% 


O^ 


wr^ir^fimB^ffi^ 


332 


StATUTKS   (CoXSTr.UCTION    OB"). 


Bi 


i 

i- 


fornia,  concerning*  tnulf.'niai'ks,  does  not  take  away 
the  common  law  remedy  for  the  protection  of  the 
same,  from  tliose  who  do  not  register  their  trade- 
mark according  to  the  provisions  of  the  act.  ISO,'}, 
1:^11  prenie  Ct.  of  C'al.,  Derringer  o.  Plate,  20  Cal. 
29-2. 

^  000.  By  tlie  terms  "peculiar  name,"'  letters, 
marks,  devices,  iigures,  or  other  trademark  or 
name,  as  used  in  the  statute  concerning  trademarks 
"*  :tters  Laws,  art.  7,  1IJ4  [Cal.  |),  is  not  meant  the 
esi..'>Iished  and  proper  names  by  which  the  "  ai-ti- 
v'l's  "  to  which  they  are  attached,  and  by  whi(!h 
th«  •  =-•"  knowji  in  the  market,  nor  something  in- 
d. .  .,j,  their  actual  kind,  character,  or  quality, 
but  oy  them  is  meant,  as  the  subjects  of  i)i-otection 
against  iid'ringement,  something  new,  not  before  in 
use, — something  of  the  manufacturer's  own  inven- 
tion, or  lirst  put  to  use  by  him, — something  [)e(  ti- 
liar  to  him,  and  not  common  to  him  and  others, — 
something  which  is  inti'insically  foreign  to  the 
"articles"  themselves,  and  only  serves  to  designate 
them  because  it  has  been  fancifully  put  to  that  use, 
in  disregard  of  all  natural  relations.  The  statute 
does  not  vest  in  the  manufacturer  or  vendor,  as  the 
case  may  be,  any  exclusive  i)ro])erty  in  the  "arti- 
cles" manufactured  or  sold,  nor  in  names  or  the 
Avoids  which  most  aptly  apply  and  piopeily  describe 
theni  ;  and  even  if  such  were  the  i)roper  construc- 
tion of  th(!  statuti',  it  would  be  void  for  want  of 
j)(>W('r  in  th(^  legislature  to  enact  it.  If  the  statute 
aoes  bevond  the  conuMon  law  and  end)ra('es  within 
its  protection  matter  which  relates  to  kind,  char- 
Hcter,  or  (puility  of  "articles,"  it  is  not  peiceived 
why  it  does  not  trench  upon  the  law  of  copy  and 
l)atent  rights,    and   is    therefore  void.     It  is  sug- 


■N     '  .'.9 


Statutes  (Coxstruction  of). 


333 


gested,  l>uf  not  decided,  that  the  terms  used  in  tho 
statute,  to  wit:  "to  designate  it  as  an  ai'tielo  of 
])eruliar  kind,  chai'actei',  or  qualily,"  were  inad- 
vertently inrorporated  into  it  under  a  mislalveu 
notion  of  the  functions  of  a  tnuhMutiik,  and  tiiat  in 
respect  to  tliose  terms  the  statut(M'an  huvr  no  in- 
telli^ihle  opei'ation.  18(58,  S/fprrti/e  CI.  <>/  Ca/., 
Falkinhur,iL>'h  /'.  Lucy,  I}.")  Cff/.  52. 

5^  0(51.  Tlie  statute  of  Missouri  concerninii!,'  trade- 
niai'ks,  (Jen.  Stat.  180."),  p.  012,  was  not  desi_i;ned 
to  weaken  or  al)i-id2;e  anv  existing  liuhts,  or  any 
future  riii'lit  to  a  tracU'nuii'k,  wliich  mi,<;ht  bo 
acquii'ed  by  appropriati(m  and  use.  A  wiitlen 
claim  to  a  disputed  trademark,  liled  in  the  (Mcv,  of 
recorder  of  d(M'ds  in  tlie  count}'  of  St.  Jjouis,  under 
the  act  of  March,  18(5f5,  Gen.  Stat.  1805,  p.  Ol'i,  can- 
not avail  th(^  manufacturer  of  stoves  in  another 
State.  18(50,  Snjncnr  CI.  of  Mo.,  Filley  v.  Fassett, 
44  Mo.  1(58. 

i^  0(52.  rnd(M'  the  provisions  of  section  4  of 
<-hai)ter  :5i)(5.  Laws  of  18(W  (New  York)  entitled 
"•an  act  to  prevent  and  punish  the  use  of  false 
stamps,  labels  or  trademarks,"  as  amended  by 
section  2  of  cha])ter  200,  Laws  of  18(5:5,  to  render  a 
]>ei'son  liable  to  the  penalty  therein  prescribed,  tho 
act  complained  of  must  have  been  done  with  intent 
to  defraud  some  person  or  jjeisons.  or  some  body 
corpoiate.  1871,  N.  Y.  Court  of  Ajipcal^.,  Low  t). 
Hall,  47  X.   y.  104. 

^  0(5:$.  Secli(m  77  of  tlu^  act  of  .hdy  8,  1870  (10 
U.  S.  Stat,  at  Lar.i:,e,  210),  provides,  as  a  ivijuire- 
nient  for  obtaining'  a  trademark,  the  tilinu',  in  tho 
patent  oflice,  of  a  declaration  under  oath,  as  to  the 
ri^ht  to  the  trademark.  A  certilicate  by  tho  C(mi- 
missioner  of  i)atents.  of  tho  deposit,  for  legist lation, 


*  '1 


f :  i<  ■ 


"^mm 


;534 


Statutks  (Coxstuuctiox  of). 


of  a  trademark,  of  wliicli  a  copy  is  theroto  annexed, 
and  of  I  he  lilin,i>"  of  a  statement,  of  which  a  copy  is 
annexed  to  the  certificate;  (but  which  statement 
does  not  contain  any  sucli  dechirationi.  and  that 
the  party  depositinu;  the  tradeniarlc  lias  otl'  rvvise 
conii)]ied  with  the  act.  and  that  tlie  rradema»iv  has 
l)een  rei^istered  and  recorded,  and  will  remain  in 
foi'ce  foi"  a  period  named  in  the  certificate,  is  not 
evidence  of  the  fllinii^  of  such  ch^'hiiation.  187l\  f/. 
S\  Circ.  C7.  ^V.  i'.,  Smitli  c.  Reynolds,  10  Blalrhf. 
85. 

^  9(54.  The  firm  of  J  k.  Co.,  in  registering  a 
trademark  foi-  ])aints  in  the  patent  office  under  secs 
ticms  77,  <S:c.,  of  the  act  of  July  S.  1870(10  U.  8. 
Stat,  at  Large,  'ilO),  filed  as  the  names  of  the  par- 
ties desii'iug  tin;  protection  of  the  trademark,  and 
their  residences  and  places  (»f  business:  'SJ  &  Co., 
of  2s' o.  270  IVarl  street,  in  the  city  of  New  Yoik, 
County  and  Slate  of  New  York,  and  engaged  in 
the  manufactun*  and  sale  of  paints  at  said  New 
York,"  and  nothing  furthei-:  llcliL  that  it  was  not 
nec(»ssaiv  to  recoid  the  name  of  each  of  the  indi- 
vidual  i)artnei's  of  the  firm,  and  his  ])lace  of  resi- 
dence, and  that  the  residence  and  placti  of  business 
of  the  llrm,  as  the  ])arty  desiring  the  protection, 
were  sufficiently  stated.     Ibid.  p.  100. 

§  0(5.").  The  act  recpiiring  that  the  "the  class  of 
mei'chandise,  and  the  ])articular  descrii)tion  of 
goods  comprised  in  such  class,  by  which  the  trade- 
mark has  been  or  is  intended  to  be  appropriated"' 
shall  be  i'ecord(Hl,  where  a  trademark  is  claimed 
for  paints  generally  any  further  statements  than 
merely  specifying  paints  as  the  clasis  of  merchan- 
dise, without  si)e(ifying  any  description  of  paints,  is 
unnecessary.     Ibid.  p.  100. 


Statuths  (Coxstkuctiox  of). 


a:35 


§  906.  The  illustratio!!  of  :i  orowti  was  claimod 
by  J  &  Co.,  as  a  tradoniai-k  ['or  paints  <5eii(!i"illy, 
under  said  aer,  and  ir  was  alle,i>:(»d  tliat  11  had 
inlTini^cd  such  rii^lif,  and  if  a!)[»;'ar(;d  that  a  brand 
of  Ji  crown  had  Ix.mmi  nscd  by  B,  for  white  Ivid 
alone,  of  a  paiticular  qnalily  and  description,  niiuh' 
by  liini  continnonsly,  from  a  i)eri()d  ])rioi'  to  the 
use  j.nd  to  the  re;i;istration,  of  snch  biand  as  a 
trademai-k  by  J  &,  (Jo.,  and  nntil  11  purchased  from 
13  liis  paints,  materials  and  labels,  and  tlie  riL-'ht 
to  use  them,  inclmllntir  tiie  labels  embodvin.'''  the 
device  of  a  ci-own,  and  tiiat  R,  fi'oiu  the  time  of  his 
yxirchase,  which  was  i)rior  to  snch  reg'ist ration,  had 
continnonsly  nsed  the  device  of  a  crown  on  some 
description  of  paints:  //r/c/,  that,  at  the  time  of 
re^'isierin.ijf  the  trademark,  J  &  Co.  liad  no  ri;2;ht 
to  the  use  of  it  for  paints  generally,  becans*'  R 
then  had  a  right  to  use  it  for  tin?  class  of  paints  for 
which  1),  as  well  as  11,  had  previously  used  it. 
/fti(/.  p.  100. 

vi  007.  A  registration  under  the  act  of  Congress 
must  stand  or  fall,  as  a  whole,  for  that  to  whicli 
the  registration  declares  it  is  intended  to  a])i)r()pi'i- 
ate  it,  tiiere  l)eing  no  provision  to  maintain  a  suit 
on  it,  Avhere  the  gi-aiit  is  valid  as  to  .i  part  but  not 
as  to  the  whole.     J  hid.  100. 

i^  008.  The  protccti(Mi  given  by  the  act  of  July  8, 
1870  (lO  L\  8.  Stat,  at  L.  :210,  211),  to  the  use  of  a  trade- 
mai'k,  is  to  the  e.Kclusive  use  of  such  trademark 
only  so  far  as  regards  the  i)a]ticular  desci'iptiim  of 
goods  set  forth  in  the  statement  liled  under  said 
act  as  the  particular  description  of  goods  to  or  by 
which  the  ti'adcmaik  has  been,  or  is  intended  to  be, 
appropriated  ;  and  the  prohibition  is  only  against 
the  use,  by  another,   of    substantially   the    same 


330 


Statutks  (Cox^^TiUTCTioisr  of). 


tradmnni'k  on  iroods  of  su!) sliintially  the  same  de- 
scn[)tive  qualities  as  sucli  particular  description  of 
^oods  H(^t  foi'lli  in  such  iiled  rlatenient.  1873, 
If.  S.  Cirr.  in.  N.  >'.,  Os.ijood  ^?.  liockwood,  11 
lUaichf.  :]1(). 

^  DO!).  A  sta lenient  filed  by  O  set  forth  that  his 
trademark  consisted  of  (h(^  word  "  Ileliotype,'' 
"  in  conncM'Jion  willi  llic  j)roduction  and  i)ul)Iica- 
tiou  of  prints,"  and  th;it  *'tli(^  particular  article  of 
tiad«; "  ni)on  which  lie  had  used  it  was  "the 
prints"  which  he  designated  as  "  Ilelioty})e." 
Siicli  priuts  w(n'e  made  by  a  process  to  which  the 
name  "  lleliotyi)e"  was  ap[)lied,  and  which  was  a 
])ro(;ess  seciured  by  h^ttei's  patent  of  the  United 
States,  under  which  O  was  the  sole  licensee.  Tlie 
dehMidant  used  the  word  "  lleliotypci "  on  prints 
l)ublished  by  him,  \vhich  were  not  nindc^  by  such 
l)atented  process.  /AVr/,  that  the  right  of  O  lo  tlie 
iecord(>d  trademnrk  was  limited  to  its  use  on 
prints  made  by  such  ])atenled  process.     Ibid. 

%  1)70.  The  act  of  Congress  of  July  8,  1870,— 
providing  for  the  registration  rf  trad(Muarks, — 
does  not  (at  least  in  a  State  '  art)  furnish  any 
further  or  greater  protection  than  the  court  might 
liave  i)revionsly  given.  1873,  N.  Y.  i^npcr'ior  CI. 
8.  T.,  Popham*  r.  Wilcox.  M  Ahb.  Pr.  {N.  H.)  206  ; 
S.  C.  on  appeal,  38  iV.  Y.  .^>/per.  Of.  274. 

^  971.  The  act  to  piotect  merchants,  «Src.,  ngainst 
counterfeit  tradeuiaiks,  approved  lA'bruary  22, 
1870  (Adj.  Sess.  Acts  1870),  was  designed  to  pro- 
tect foi'eign  as  well  as  domestic  trademarks,  and 
may  be  invoked  l)v  citizens  of  other  States  and 
(H)untries.  1874,  Sxprcnic  CI.  of  Missouri.,  State 
of  Missouri  t\  (libbs,  m  Mo.  133." 

§072.      Query. —  whether,    when    a   trademark, 


w^ 


Statutes  (Coxstiiuction  of). 


337 


on 


jainst 

22, 

pro- 

\,  and 

and 

1  State 

nark, 


registered  nnder  the  act  of  C<)n,u:ress  con'^ists  of  a 
combination  of  words,  letters,  nionou'ianis  and  pic- 
tures, it  is  infringed  wlien  the  wjiolc  'Mnubiiiation  is 
not  used.  IcST."),  17.  K  Clrnill  C,  JIJ.,  Tucker 
Mfg.  (Jo.  >\  Boyington,  9  Of.  tiaz.  {if.  aS'.  Patent 
Olilcc)  455. 

i>  073.  A  person  wlio  liad  l)oon  using  for  upwai<ls 
of  a  yciir  a  ti"idemark  bcni-ing  the  word  "i-euis- 
t('i'<^(l."'  it  liaving  been  I'egistei'ed  under  the  (;oi)y- 
riglit  act  18()2  (2.")  &  20  Vic.  c.  08),  ai)plied  for  its 
I'egistration  under  the  trademai-k  registration  act 
1875,  l)ut  the  reu-istrar,  acting  on  llie  instructions 
of  the  commissioners  of  patents,  one  of  wliom  is 
the  h)rd  chancellor,  who  is  empowered  by  the  act  (o 
nialve  general  rules  as  to  registration,  declined 
either  to  register  the  trademark  with  the  woi'd 
"registered,"  or  to  allow  the  advertisements  re- 
quired by  the  act  befoi'e  registration  to  be  issfied 
beaiing  the  woid  " registei-ed "  as  part  of  the  ti'ade- 
maik.  An  application  under  secti(jii  5  of  the  act, 
for  an  order  directing  the  registiar  to  take  the 
necessary  steps  for  the  registration  of  the  ti'ade- 
marlc  in  its  entirety  was  refused.  Sc/n^Jc,  the  <'opy- 
right  act  of  1802  (25  &  20  Yic.  c.  08).  is  not  ai)pii- 
ca])le  to  trademarks.  1875,  V.  0.  IhilT s^  (//.,  In.  re 
Meikle's  Ti-ademark,  24  W.  li.  1007;  S.  C,  40  i.. 
/.  li.  (iV.  ^.)  (Jli.  17. 

^  1)74.  The  trademarks  registration  ac^  of  1875 
(38  &  30  Vic.  c.  on,  and  the  trademarks  registration 
nmiMidment  act  of  1870  (30  &  40  Vi(!.  c.33),  construed. 
KS77,  V.  C.  M<(Ii/i-s\  In,  re  Barrow's  Application,  4(5 
Law  J.  li.  {N.  >S'.)  C/i.  450;  S.  C,  '2:^  W.  11.  407, 
504  ;  S.  C,  30  L.  T.  R.  {N.  S.)  201. 

See  also  §  284. 
23 


1   ' 


■"""  lll 


M     " 


338 


Symbols — Thademarks. 


"11 


SYMBOLS. 

See  Devices. 


TRADEMARKS. 


It  <ii 


§  970.    I. — By  whom  property  in  tradomaiks  may 
be  possessed. 

See  (tKxekal  Phtnou'les   axd    Definitioxs  ; 
Aliens;  Paktxeksiiip  ;  Assign  m  ext,  &o. 

II. — The  manner  in  wliich  property   in    tiade- 
niarks  maybe  acquired  and  transfei'i-ed. 

i^ee    Gexeual    Piiivcii'les  axd  Defixitioxs  ; 

A('(iUISITION  ;  ASSKIXMEXT  ;  ACQT'IES('EX(^E  ; 

Auanooxmext  ;  License  ;  Laches;  Pnioii  I'se  ; 
KxcLT^siVE  Rkjiit  ;  Paiitxehsiiip  ;  Reoistuation  : 
OPEitATiox  of  Law. 


M' 


It!   ''. 


III. — Of  the  requisite  components  of  trademarks 
to  entitle  him  who  owns  them  to  j)rotection  in  their 
exclusive  use  as  jiroperty. 

See  OuiGix  axd  OwxEKsiiir;  Name;  Words; 
Devices;  Letters;  Nir.MEUALs ;  Misrei'^esen- 
TATiox  ;  Quality. 

IV. — To  what  a  trademark  may  be  applied. 

See  Vehicles  ;  Purlicatioxs  ;  Sigxs  ;  Gen- 
eral Prixciples  axd  Defixitioxs. 


i 

S: 


V.     Of  the  violation  and  infringement  of    the 
right  of  iiroperty  in  trademarks. 


Trap  KM  AUKS  i\  Genehal. 


830 


See  Imitation';  Piiw-icatioxs  ;  Laukl.s  ; 
"Nami:;  Lkttkus  ;  Ncmkuai.s  ;  Wokds  ;  j)i;- 
vicKs;  Miftur.i'KKsKNTATiox  ;  Quality;  Intent; 
Cai'sk  of  Ac'Iiox  ;  Dkfexsks, 

VI. — lie  nu 'dies. 

See  Uk.mkdiks;  ;  Coxtempt;  Ixjuxctiox  ; 
Damages  ;  Ciumes  ;  Statutes  (Coxsthuction 
of). 


TllADEMARKS   IX   GENERAL. 

^  080.  An  injunction  will  not  he  made  to  in- 
clude the  manner  of  hoxinii;  an  article,  the  i)hrase- 
ology  of  cautions,  and  otlwn-  incidents  which  aie 
to  he  considered  open  to  llie  puhlic.  1807,  X.  V. 
Si/prrmt'  a.,  (}.  7'.,  Gillott  ^\  Esterhmok,  47  IhulK 
4.")."). 

ji  081,  If  an  article  is  an  artilicial  conjp(»und  of 
worlh.  of  such  fame  as  to  he  in  demand,  and  its  in- 
;4"redients  and  the  proportion  of  their  admixtnie 
the  result  of  the  study,  information  and  skill  of 
the  ownei',  and  known  onlv  to  him.  an  iinitntion  (tf 
any  proper  synd>ol  hy  which  he  (guaranteed  to  the 
l)u:cliaser  the  verity  and  orii^in  of  rhe  compound, 
would  be  a  violation  of  the  I'iiihts  of  both.  And 
wliy  '.  For  that  the  j)ni'«'haser  has  a  right  to  have 
the  very  thinii;  whicli  he  seeks,  and  tlie  ownei-  has 
the  right  that  the  veiy  thing  sought  shall  be  sold  at 
his  i)r()lit.  It  does  not  alter  this  right  that  the 
com[»ound  held  for  sale  and  sought  for,  is  made  by 
nature  and  not  by  ai't.  The  owner  of  its  sole  place 
of  production  is  the  exclusive  owner  of  it  in  the 
lust  case,  as  in  the  lirst.     And  in  the  last  case,  as  in 


v.  y: 


1^ 


340 


Trademakks  in  Gknkkal. 


lU'-i 


fii 


I  hi 


?)  ■  '4 


I     'K 


I'    'v 

Ifl  .'ft? 


If:    ^' 


'Wi 


the  iii'st,  tlie  l)uy«M'  se(!k.s  that  vory  thiiiLi;.  And  both 
h.ive  the  ]ii;ht  that  the  tnitlifiil  syinlx)!  or  (hnlce 
whicli  tells  of  the  genuineness  ol'  lis  origin  shall 
not  l»e  imitated  wilh  intent  oi  ed'ec-t  to  dcei'ive.  Jl 
is  the  peeuliaiity  of  the  article,  its  merit  which  is 
individual  and  exclusive,  which  at tiacts  the  l)uy<M'. 
It  is  the  sole  power,  IVom  liaving  so]ec(»utrol  of  the 
place  oi;  origin,  to  furnish  this  peculiiiiity,  which 
is  the  jidvuntage  of  the  owner  and  is  his  j)roperty 
of  value.  The  trademark  adt)i)ted  is  the  indication 
ro  the  iirst  of  where  he  may  feed  his  desire  and  the 
piotection  to  the  last  that  he  shall  keep  the  prolit 
of  being  the  one  who  does  feed  it.  187J,  JV.  Y. 
Court  of  x\j)pmlHy  The  Congress  and  Empire 
Spiing  Company  o.  The  High  llock  Congress 
Spring  Company,  4.")  N.  Y.  201  ;  S.  C,  10  Ahh.  Pr. 
{X.  S.)  :U8  ;  reversing  S.  C,  .j?  Baih.  A-JO. 

§  982.  When  the  spring  Iirst  known  as  an<l  named 
"Congress  Spring"  luoduces  natui'al  water  of 
peculiar  medical  and  curative  properties,  possessed 
by  no  other  spiing,  the  w(»i(ls  '"Congress  Water," 
and  "Congress  Spring  Water"  appropriately  in- 
dicate the  origin  and  ownership  of  the  water  flowing 
i'lom  Congress  Spring,  and  the  word  "Congress" 
used  in  ccmnection  with  the  bottling  and  sale  of 
such  water,  is  a  proper  and  legitimate  trademark. 
Ihlcl. 

%  us;}.  A  barrel  of  peculiar  form  and  dimensions, 
irrespective  of  any  marks  or  brands  impressed 
upon,  or  connected  with  it,  cannot  become  a  lawful 
tratlemark,  or  a  substantive  part  of  a  lawful  tiade- 
mark,  so  as  to  invest  the  claimant  with  an  exclusive 
right  to  use  it.  1871,  U.  S.  Circ.  CI.  of  Cul.,  Mooi - 
man  i\  lloge,  2  i^aiD>je)\  78. 

§  'J84.     The  defendants  were  I'estrained  from  sell 


m 


TUADKMAUKS    IN    GkXKKAL. 


341 


ing  *'aiiy  })repai';Ui(>ii  oi' t'oiiipoiiiul  mikU'IIIu-  iiiiiiit' 
:iml  style  ol! '•,!.  B.  Wilder  iV  Ci.'s  Slomiicii  15il- 
fer.s"  printed,  st;iliil>ed  or  eiluT;ived  ii[)(>ii  lliebot- 
tlt's,  Inlx'l.s,  wi:i])|»ei.s,  coveis,  boxes  or  juiekiiiies 
fliereof,  ulso  froiii  using  the  bottle  herein  exhibiieil 
niarUt'd  '  H 'J,'  nnd  I'roni  imitating  (^f  causing  lo  lie 
imitated  in  any  manner,  either  the  bottle  or  label 
of  the  plaintiir  herein  marked  ivsper-lively,  "A,  and 
1',/  "  Wihh'r  r.  Wild.-r,  ('/.  o/C/nn/.  Vw/.,  eiled  in 
M()o]inan  /'.  lloge,  2  S((w//rr,  81). 

§  DS.").  Althongh  the  name  ad(»i)re/l  by  dealers 
foi'  their  article  \h',  not  one  to  the  exclnsivt;  nse  (»i' 
\vhi<'h  the}' are  entitled,  yet  the  iH-cnliai'  style  (.f 
the  package  in  which  they  put  n])  the  ailicle,  and 
the  combination  constituting  the  lal>el  may  be  pro- 
tected. Where  a  pecadiardevice  is  ai>]>lied  loa  box 
or  barrel  ,'s]>ecially  prepannl  to  dis])lay  il.  the 
spechd  prei)aratioii  oi'  the  box  or  baiiel  <'onslilutes 
a  part  oi'  the  tratlemark,  and  may  ]»articip,ite  in  its 
protection.  This  piincii)lL!  ap[»lied,  to  protect 
]tlaintill's  in  the  iiseol'a  baiicl  with  a  led  I'im  and  a. 
gla/ed  surface  on  the  In-ad,  with  the  letteis  A  A  A 
and  a  ^hdlese  cjoss,  and  to  enjoin  defendants  from 
nsiiig  a  similarly  prejjared  head  with  the  leilers 
XXX  and  a  crown,  1872,  A'.  )',  :SffjM r/o/'  C7.  N.  7'., 
Cook  r.  starkweather,  i:{  AM.  Pi .  {S.  ^.)  \\\y>. 

>;  U8(5.  'J'lie  plaintiil's  sijice  ]8.')r)  had  I'olled  ilieir 
carpets  ui)oii  ti  hollow  sti<'k,  which  stick,  when  jait 
into  the  centi'eof  theii'  rolls  of  cai|)et,  they  claimed 
to  be  their  trademark,  'i'he  stick  consisted  of  two 
pieces,  ground  on  the  inside,  so  that  wlu'ji  the  two 
jtieces  were  |)nt  together  the}'  foiined  a  shell  wiih 
a  lectangular  o2)eiiing  and  with  tlie  coi-iieis  of  the 
outside  rounded  olf  so  that  the  entls  of  the  slick  or 

This  rim-'   was 


siiell  formed  an   octagomd  ring 


^ 


■•:  1'*- 


342 


TliADEMAItKS    r.\    GkNKIJAL. 


I*'  »!> 


r' 

if 


botli  visible  mikI  tanui'*!*'  l'<  ciicli  cud  <•('  t';i('li  roll 
ol!  cMi'iM^t.     The  stirk  ov  shc-ll  was  iMiidf  llif  U'liirtli 
of  tl»»!  i-ulls  of  ••ai'iH'r,  so  MS  to  i'xliil)ir   lln'   riii.t;s. 
Th«^  slu'll  was  a(l»»[)tt'(l  in  isr>r>  and  used  ooiititiii- 
ously  v\{'V  siiu'«'  l>y  jtlaiiitilVs  as  a  tradciuark,  and 
was  r('_<;isttM-ed  as  a  iradcinark  ii»  ili*  I'.  S.  |»at<:Mit 
olli<'('  ill  1S7I.     TU(>d«dVndaiifs»  in  ls7*J.  ('(Wiimciicrd 
to  make  and  stdl  «'ar|H'ts  lolk'd  upon  sticks  ii'scni- 
bliny  tliu  sticks  usimI  liy  tlic  plaiiililis.     'I'Ik'  plaiii- 
lill's  lilcd  a  hill  to  enjoin   the  ddciidants  from   the 
usol)ytiiein  of  such   stidvs  I'of  ca;p»'ts.     'I'lic  cvi 
deuce  ill  tli(>  casH  showed  that  such  slicks  in  rolls 
of  caipel  indicated  to  the  puhlic  tliat  the  licwuls  con- 
tainiiii;-   them    were   made   by   tht^   i)laintin*s;  that 
any  oiu'  seeini;-  the  shells  in  carpets  would  suppose 
them   to  bo  the  i»laintiilV  <i'oods ;  and  that  the  use 
by  the  defendants  of  said  sticks  would  deceive  the 
public.     J'( /(f,  that  said  stick  as  claimed  by  [)lain- 
tilt's  was  a  ,i!;ood  and  valid  trademark,  that  they  were 
entitled  to  its  exclusive  use  ;  and  that  th(^  deftMuhints 
shoi  Id  be  enjoined  and  pay   to  tho  ])laintilfs  the 
projlts  and  ,ii;ains  i'e<5eived  l)y  tlieni  in  (jonsenuemie 
of  their  infrini^emeut,  to,i;*etlier  with  such  (hiniages 
as   plaintilfs   had   sulfered   therehy.     187:5,     fl.    K 
Circi(lt  (Jt.  Pi'iin.,  The  Lowell  Manufacturing- Com- 
pany V.  Larned,  unreported. 

§  987.  It  scein.s  doubtful  whether  in  a  collateral 
proceeding  the  court  is  emi)owered  to  restrain  a 
party  from  the  use  of  a  trademark,  awarded  to  him 
in  the  established  ('oui"se  of  jtrocedure,  by  the  cotn- 
missiijuers  of  patents.  187(5,  N.  Y.  Suprcnie  CI. 
S,  T.,  Decker  t.  Decker,  52  llow.  Pr.  218. 


11- 


Trade  Skc h kt  — Tij ans feu . 


343 


TRADE    SECl?F7r. 

§  09.").  An  injinictioii  nr.'uitcd  to  icstniiii  the  iiso 
of  a  secret  ill  the  roll! pound iiiL!;  ol"  a  iiii-diciiie,  not 
bein^  tlu!  subject  of  :i  patctit.  iiiid  to  resdnin  tlie 
sal(?  of  sucli  medicine  by  u  defeiidant.  who  aiMjiiiit'il 
the  Iviiowledi^e  of  the  secret  iii  violaliou  of  I  he  con- 
tract of  tiie  ])ai'ty  by  wlioin  it  was  couiniunicated. 
and  in  l)i-each  of  ti'ust  and  conlidein  ■  .  A  i)!aintilf 
n(»t  havinu^  the  i)rivile!j;e.s  of  a  i)ateaici-,  may  !iav»^ 
no  title  to  be  pi-otected  in  tJie  exchisive  nianul'ac- 
ture  and  sale  (»f  a  medicine  auai  r  the  world  ;  l)ut 
he  may  notwithstanding-  liave  a  ,<j;-ood  »ille  to  jji-o- 
lection  ai^'ainst  tlie  jjurticular  dt'lendaut.  The  in 
junction  i-estrained  the  sale  ol'  nu'dicine  by  tht' 
defendant  under  the  name  of  the  medicine  pre 
paretl  accordint?  to  tlu?  secret  prep.it  tion,  not  on 
the  ground  of  the  use  of  tlje  name  alone  but 
becjinse  it  was  by  tlie  us<»  ol"  the  name  lliat  the 
defendant  was  availing  himself  of  th«»  brea<di  of 
faith  and  contract.  The  defendant  accpiired  the 
secret  fi-om  T  M,  and  such  communication  was 
a  breach  of  faith  on  tlie  jtart  of  T  M  towards  the 
plaintiff.  18.-)  1,  Ihfoie  the  Vice  Chaiicdlor,  Mori- 
son  v.  Mojit,  9  J  fare,  241. 

§  990.  A^e//fble.  It  might  have  been  different,  if 
the  defendant  had  been  n  i)urchaserfor  value  of  the 
secret  Avithout  any  notice  of  any  obligation  affect- 
ing it.     Ibid. 

See  also  §§  144,  152,  242,  012. 


TRANSFER. 
See  AssIG^'MENT. 


Ml 


]:W. 


344 


Use — Vexdor. 


USE. 


See  Acquisition  ;  Piiroit  Use  ;  Exclusive  Right. 


VEHICLES. 

See  §§  87,  88,  320,  594. 


if 

m 


i\  si: 


VENDOR. 

^  1000.  A  oomniision  mercliant  wlio  sells  an 
article  under  a  simulated  trademark,  knowing-  its 
cliaraoter,  is  liable  to  a  suit  to  restrain  its  further 
sale,  by  the  jiroj^rietor  of  the  trademark,  and  will 
be  subjected  to  the  costs  of  such  suit.  184."),  Vk'c 
rii.  ^andfonh  Coats  ??.  llolbrook,  2  i^amlf.  t'h.  580 

^  1(H)1.  The  venders  of  an  article  of  merchandise 
are  entitled  to  <he  exclusive  use  of  a  trademark 
adopted  by  them  to  distinguish  such  article, 
althoutih  tliev  do  not  manufacture  the  goods  to 
which  it  is  ai)i)lied.  184(5,  K.  Y.  Court  of  Error.s^ 
Taylor  ?\  Caipenter,  11  Pa/(j/e,2',)2;  S.  C,  2  i^am/f. 

cii.  00:1 

§  1002.  Goods  were  sold  l)y  an  auctioneer,  with- 
out any  "warraJit  or  misi'epresentation,  and  the  same 
turn(>dout  to  be  spurious,  and  the  labels  up(mthem 
forgvd  ami  counterfeired.  Jf<'l(l^  that  such  facts 
constituted  no  defense  to  an  actiim  upon  a  note  given 
for  the  pni'chase  price ;  there  l)eing  no  proof  that 
the  auctioneer  knew  the  fact  of  the  siiurious  nature 


Vkxdor. 


n4.") 


of  th(>  ijroods,  or  that  lie  had  anv  better  means  ol' 
jud^nnn'ol'  their  ^■('iiiiineness  than  the  buyers.  ]811.>, 
i.y.  )'.  SiijH run'  (It.  a.  7'.,  Jiiidderow  o.  Jlmitinu-- 
ton,  ;i  ^iindf.  2r/i. 

>^  1()<»;{.  If  one  manufaetures  ,u;o()ds  himself, 
and  puts  upon  them  tlie  trachuniirk  of  anotlier, 
thouf^h  lie  may  not  know  to  whom  that  mark 
belonn's,  lie  must  at  lenst  know  that  he  has  iiimscll' 
no  riti'ht  to  the  mark.  That  knowh'duc  makes  liiui 
liable  to  account  for  the  i)rolits  he  may  have  realized 
by  his  conduct.  But  if  one  buys  ^oods  fiom  a 
third  party,  believini^  them  to  be  i^enuine,  whih^  in 
fact  they  are  spnriou'^,  it  is  not  until  Ik^  has  been 
told  that  they  are  so  that  he  can  be  considered  to 
be  guilty  of  any  fraud,  or  to  be  li.-ibh'  to  renth'r  any 
account.  1SG4,  Manltr  of  Uw  ItoJh,  Meet  r.  Cou- 
Kton,  10  Law  Times  11.  (ZV.  *V.)  ai).") ;  iS.  C,  'X\ 
Bcav.  oTH. 

§  1004.  The  defendants,  who  had  innocently 
bought  and  sold  as  genuine  an  article  wliicli  was  in 
fact  spurious,  were  resti'ained  from  selling  it  with 
the  plaintilf's  ti'ademark,  but  were  not  ordered  to 
account  foi'  the  prollts  they  had  made.     Ibid. 

§  100.").  The  phiintilf  being  a  tiu'ead  manufac- 
turer of  repute,  the  defendant  bought  in  the 
market  thread,  wound  on  spools,  not  made  by  the 
])hiinti(f,  of  inferior  cpial it y,  and  che!i[)er  than  his, 
and  not  bearing  his  name,  but  marked  with  the 
name  of  a  lirm  of  winders  of  thread,  who  were 
known  to  be  accustomed  to  pur<'hase  of  the  plain- 
tilf  thread  in  the  hank  for  the  pui'pos(»  of  winding, 
and  selling  it  when  wound.  Defendant  sold  the 
gt)ods  to  a  wholesale  'justcmier,  with  the  assurance 
(given,  as  he  said,  without  knowledge  of  any  mis- 
representation) that   they  were  of    the  plaintilf's 


;^ 

k'' '" 

..'     . 

' ' 

>" 

^■'     ■ 

y,' 

^i 

*\ 

m 

t 

346 


ViOLATio>^ — Words. 


make,  and  invoiced  tliem  to  the  customer  un- 
der tlie  desci'iption  of  certain  numbers,  wliich 
the  phiintiif  liad  ndoi)ted  and  exclusively  used  in 
order  to  desi<>'nate  his  iKirticiilar  manufacture.  The 
customer  attached  tlie  X)laintiirs  name  and  numbers 
to  the  spools  of  thread,  and  retailed  it  to  the  ])ul)- 
lic  as  of  the  itlaintilfs  make.  I/</d,  that,  though 
the  plaintiif  had  sulfeied  a  serious  Avron.u',  yet  that 
tliere  liad  not  been  that  clear  and  disrin(^t  repre- 
sentation given  to  tlie  world  by  the  defendant  of 
the  goods  being  the  goods  of  the  i)laintilf  which 
would  justify  the  court  in  granting  an  injunction 
against  liini,  and  the  bill  was  disnussed,  l)ut  with- 
out costs.  18(50,  V/ce  Cli.  Woof/',s  C'/.,  Ainswoith 
V.  Walmesley,  La  to  R.  1  Eg.  518  ;  S.  C,  12  JnrLsl, 
{R.  *S'.)  mj;  S.  C,  14  WecJdf/  11.  3G;i ;  S.  C,  14 
Law  T.  {N.  S.)  2:20  ;  S.  C,  35  Law  J.  (iV.  -S'.)  Ch. 
352. 

See  also  S  769. 


VIOLATIOjS". 

See  I]!irRIXGE]MENT. 


WORDS. 


ifi! 


§  1010.  The  court  of  chancery  will  not  grant  an 
injunction  to  restrain  the  issue  of  goods  bearing 
hd)els  containing  a  false  re|)resentation,  when  such 
falsehood  is  not  an  infringement  of  any  right  vested 
in  the  plaintiif.  The  persons  to  whom  prize  medals 
have  been  awarded  by  the  commissioners  of  the 


Words. 


347 


International  Exhibition,  liave  not  ip-^o  faoto  any 
special  property  in  tlie  nntuiv  of  :i  ti;uleni:u'k  in 
the  words  "prize  mec In l/'  Tlicrd'onN  where  a  jxm'- 
son  who  luul  not  obtained  such  a  nicdiil  issued  his 
goods  witli  lalxds  aflixr-d  to  tlicni  beariii'i'  llif 
words  "Prize  ^ledal.  18(52,""  the  ciuirt  lel'used  to 
interl'ei'e  at  tlie  instance  ol"  a  i)erson  wlio  had  ob- 
tained such  a  medah  ^Sr/z/AA.-  II"  it  had  been 
shown  that  an  order  i'or  ''Prize  Mt'dal  Pickles"' 
would  in  the  ti'ade  be  answeivd  by  su[)plyiii,u,'  llie 
])laintiH"s  })ickles,  there  might  Ix^sonie  roundatioii 
for  the  interference  of  the  court ;  because  that  de- 
])ends  npon  the  presumption  that  the  j>ii)('haser 
does  not  know  the  name  of  the  merchant  and  rests 
(^ntiiely  on  the  re])ntation  acipiiied  by  the  ]»aiticu- 
lar  o-oods.  180;?,  Hatty  v.  Hill,  1  //.  cO  J/.  ^(U :  S. 
C,  1 1  W.  It.  745  ;  S.  C.,  8  L.  T.  li.  (A'.  X.)  71)1  ;  S. 
C,  2  N.  li.  20,-). 

^  1011.  The  comi)lainers,  AVotlierspocm  and  Co., 
nianul'actnrini;  confectioners,  ap[)lied  hiv  an  in- 
terdict ai^ainst  the  I'espondents,  .bilin  Gray  and 
Co.,  to  prohibit  them  from  vending'  lozen<;<^s  made 
by  the  res|)ondents  or  otlK^rs  except  the  com- 
plainers,  nnder  tlie  style  and  title  of  "  X'ictoria 
Lozen,;j:es,''  and  from  imitating,  &c.  Tlu;  com- 
l)lainers  said  they  were  the  lirst  to  npply  the  tei-m 
"  Mctoria  ""  to  the  loiyMiges  nianufactnred  bv  them, 
and  tliereby  acqniied  right  to  the  exclusive  nse  of 
that  name  as  a  trademark.  On  the  otuer  hand,  the 
respondiMits  contcMided  th:it  the  complaineis  had  no 
exchisive  riglit  to  the  aiticle,  and  no  exclusiv(^ 
right  to  the  same,  even  supposing  they  had  l)een. 
the  lirst  to  :ij)ply  the  term  '"  Victoria'"  to  lozenges, 
whicli  was  d(Miied.  It  was  said  to  Ix?  (pute  ;i  com- 
mon   tiling    to    api>Iy   the    name    '*  A'ictoria"'   to 


348 


Words. 


I  -fe 


'I' 


shawls,  perfiimeiy,  and  fancy  articles  in  all  sorts 
of  trades,  and  that  the  lust  use  of  such  a  name  bv 
one  manufacturer  of  an  article  well  known  in  the 
trade  gave  him  no  exclusive  right  to  the  nanie,  so 
as  to  i)revent  other  traders  from  giving  tlu;  same 
name  to  a  similar  article  which  is  fairly  and  opcndy 
rc[)res(Mited  to  be  manufactured  by  themselves. 
The  Lord  Ordinary  thought  the  docti'ine  well 
founded,  and  that  by  calling  their  lozenges 
"  ^VothersJ)oon^s  Victoi'ia  Lozenges"  the  com- 
l)l:uner.s  were  not  entitled  to  prevent  the  resi)ond- 
euts  from  selling  their  lozenges  under  the  name  of 
".John  Gray  and  Company's  A^ictoi'ia  Lozenges." 
Interdict  refused.  ISG-i,  Court  of  /SV.s•.s•/o/^s•,  aSVo^- 
Jiiinf,  Wotherspoon    i\  Gray,  86  ScoUish   Jurist, 

5?  101:2.  A  company  cannot,  by  iTser,  ac(xuire  an 
exclusive  light  to  use,  in  its  title  of  in(M)ri)oration, 
a  uenei'al  term  descrii)tive  mei'i^lv  of  the  local  it  v 
with  which  the  business  can-led  on  by  thecomi)any 
is  connected  ;  and  the  court  will  not  restrain  the 
use  of  such  general  term  by  a  new  company,  even 
though  it  be  in  evidence  that  the  former  comi)any 
may  have  been  pi-ejudiced  by  similarity  of  uame. 
Protection  of  the  Avoi'd  "'Colonial "'  refused.  1804, 
Ilolls  (7<>?A/*^,  Col (mial  Life  Assurance  Company  v. 
Home  and  Colonial  Assuram'e  Company  (^Limited), 
33  L.  J.  IL  {K  S.)  Ok.  741  ;  S.  C,  33  hrftr.  540. 

§  1013.  AVh.-i'e  th.^  name  "Ne  Plus  Ultra"  had 
become  common  in  the  trade  as  applied  to  needles, 
it  was  held,  that  anybodv  might  use  that  name 
to  designate  any  (xuality  of  needles  be  pleased. 
1860.  Vice  a/t.  Wood\s'  ^01.,  Beard  v.  Turner,  13 
L.  T.  R.  (/T.  .s:)  747. 

§  1014.     Where  words,  or  names,  r.re  in  common 


w " 


Words. 


349 


nse,  the  law  does  not  permit  sncli  an  npjn'opi-intion 
of  them  to  be  made,  so  far  as  tlicy  nic  roniinv- 
hended  by  siicli  use,  and  for  thut  reiison,  woi'ds  :iiid 
names  havinij;  a  known  or  estnblisluMl  siii-nincalidu 
cannot,  within  tlie  limits  of  sucli  si^iiilic-Mtion,  be 
exclusively  appropriated  to  the  ndvnnctMnent  of 
the  business  purposes  of  any  i)ai'ticulai'  individutil, 
firm   oi'  coniiKinv.      The   iniibilitv   to   mnke   such 

1  c  *. 

ii[)i)ropriation  out  of  them  nrises  out  of  the  cii-cuni- 
staiice  thut  on  account  of  tln.'ir  general  or  popular 
use.  every  individual  in  the  community  has  ;m 
e(xual  rii^ht  to  nse  them  ;  and  lliat  I'ight  is.  in  all 
cases,  piiramf)unt  to  the  rights  and  interests  of  nny 
one  person,  lirm  or  com2)any.  AVhat  may  alike  be 
claimed  and  used  bv  all,  cannot  be  exclusivelv 
approj»i'iatod  to  advance  the  interests  of  any  per- 
son. Numerous  cases  have  been  bei'oi'e  (lie  <'oui"ts 
ill  which  this  linntatiou  upon  the  use  of  woi'ds 
and  names  as  trademai'ks  has  btMMi  maiutaiuefl  and 
estal)lislied,  and  no  good  reason  can  be  given  for 
questioning  or  impeaching  their  coiu'lusion.  1)a.\- 
lELs,  J.  i&C>7,  N.  Y.  Siqrn'me  Com/,  d.  7'.,  New- 
man /'.  Alvord,  49  Bcirb.  HSS  ;  S.  C,  aflirmcd,  01 
X.   Y.  189. 

jj  lOlT).  But  while  this  limitation  is  entirely  rea- 
sonable, theie  can  be  no  propriety  in  exteiuling  it 
beyond  the  circumstance  n[)on  which  it  is  fouiuled. 
And  accordingly  any  member  of  tlu^  community 
whose  interests  and  business  may  be  promoted  by 
doing  so,  should  be  at  liberty  to  tipply  even  names 
and  words  in  comuKm  use  to  the  products  of  his 
industry,  in  such  a  manner  as  to  indicate  their 
origin  or  i)ai"ticula)'  manuftu'ture,  where  such  appli- 
cation will  not  intrench  upon  and  be  in  no  way 
included  in  their  use  by  the  public.     By  doing  so. 


350 


WOKDS. 


r  if 

■5 


the  rights  of  no  member  of  the  rommunity  can  be 
in  any  manner  infringed,  and  no  public  inconve- 
nience whatever  can  be  occasioned  by  it.  The  pub- 
lic will  still  be  left  at  full  liberty  to  use  such  words 
or  terms  as  they  were  used  before  ;  wliilc  for  spec- 
ical  purposes,  a  new  office  or  i)urpose  may  be  im- 
l)osed  upon  them.  In  cases  of  that  description  no 
greater  inconvenience  or  embarrassment  can  be  found 
in  protecting  parties  in  the  enjoyment  of  the  new 
use  or  purpose  engrafted  upon  a  i)opular  term  than 
lias  been  found  in  extending  that  protection  to  the 
cjise  of  a  word  created  for  the  occasion,  which  was 
done  in  the  case  of  Burnett  v.  Phalon.  Daniels,  J. 
Ibid. 

§  1016.  The  object  of  the  law  in  cases  of  this 
description,  is  to  restrain  and  prevent  fraud  upon 
the  manufacturer,  and  imposition  upon  the  public. 
And  tliat  object  would  be  entirely  defeated,  in 
many  cases,  if  courts  of  justice  were  bound  to  with- 
hold their  protection  from  i)ersons  who  imposed  a 
new  office  and  signiffcation  upon  an  old  word  for 
the  purpose  of  I'endering  it  serviceable  as  a  trade- 
maik.  Tliere  is  no  more  reason  iov  allowing  a 
person's  business  to  be  laid  open  to  the  fraudulent 
invasions  and  misrejn'esentations  of  competing 
mnnufactui'ers  and  dealers  in  such  a  case  than.tlierc 
would  be  where  the  term  was  entirely  new  an:'  .v 
vioui^ly  unused.  Where  one  person,  by  me  i\:  o" 
superior  skill,  intelligence  and  industry,  has  cicr  :i 
a  valuable  trade  for  his  goods  or  wares  in  the  market, 
and  idcntiffed  such  trade  by  the  appropriate  use  of 
t(-rms,  labels  or  devices,  the  party  who  simulates 
those  terms,  labels,  or  devices,  for  the  purpose  of 
diverting  or  securing  the  trade  to  himself,  is  guilty 
of  a  double  fraud — upon  the  person  creating  the 


Words. 


351 


ring  a 


trade  and  also  upon  tlie  public.  The  ninn  who 
goes  upon  the  market  in  that  inanner,  .substantially 
represents  that  the  goods  or  wares  whicli  he  ofl'ei's 
for  sale  are  those  of  the  jjerson  who  lirst  secured 
the  public  contidence  for  them.  And  the  act  cm- 
bodies  all  the  essential  elements  of  fi-aud.  Tiie 
appropriation  or  use  of  terms  of  a  pul)lic  nature  is 
sustained  by  Avell-c(msidered  and  v.ell-establislied 
authorities.     Banies,  J.     Ih'ul. 

%  1017.  The  use  of  the  woi'ds  "AVashing 
Powder  :  "  ITcTfl,  not  to  constitute  an  infringement 
of  i)laintiirs  label  and  trademark,  which  had  those 
words  upon  them.  1808,  Supreme  CI.  of  Val., 
Falklnburg  ??.  Lucv,  3.")  Cal.  rr2. 

§  1018.  In  an  action  bi-ought  to  enjoin  the  de- 
fendant from  using  the  plaintiff's  trademark,  if  the 
plaintiffs  can  be  pronounced  the  lii'st  to  use  the 
word  claimed  by  them,  all  hough  it  be  a  popular 
term,  and  one  in  general  use,  e.  f/.,  the  word  Bis- 
mar<'k,  as  a  designation  of  a  x>:ii'ticular  styl(^  of 
goods  made  by  them,  and  to  have  acquired  by  its 
manufacture  and  sale  under  that  nan)e  a  valuable 
interest  in  such  designation,  the  defendant  may  be 
restrained  from  using  it  to  the  same  purpose.  The 
plaintiffs  had  the  right  to  appropriate  such  name, 
in  common  with  others,  for  a  new  i)uipose,  and 
having  done  so,  are  entitled  to  avail  tliemselves  of 
all  the  advantages  of  their  superior  diligence  and 
industry.  1868,  K  Y.  Ct.  of  Com.  PJe^i.s,  S.  7\, 
Meserole  v.  Tynberg,  4  Abb.  Pr.  (xY.  .S'.)  410;  s! 
C,  80  IIoiD.  Pr.  14. 

§  1019.  There  is  no  reason  for  making  any  dis- 
tinction between  a  common  word  or  term  used  for 
an  original  or  new  pur^wse  which  has  accomplished 
its  object  and  a  new  design  adopted  by  a  manufac- 


352 


Words. 


i 


.  s^ 


tiirer.  Both  give  currency  to  the  arlicles  to  which 
they  are  applied,  jjikI  distingiiisli  tlitMii  from  other 
niannfactures  of  a  similar  charactei-.     / d/r/. 

^  1i0'20.  The  word,  symbol,  or  term,  ahsti'actly 
considered,  is  not  the  snhji^ct  of  special  light  or 
lW)i)erty,  but  it  may  beccmie  so  when  the  ai>plica- 
tion  of  it  ideiitiHes  a  particular  manufa<-ture,  and 
the  thing  made,  and  the  word,  term  or  syml)ol,  as 
applied  to  it,  are  synonymous.  Pi'operty  in  a  word, 
for  all  i)urposes,  cannot  exist,  but  property  in  a 
word,  as  applied  l)j"  way  of  a  stamx)  upon  goods, 
does  exist  the  m(mient  the  goods  once  get  into  the 
market  so  stamped,  lieputation  in  the  market, 
whereby  the  stamp  gets  currency  aUvl  an  indication 
of  superior  quality,  or  of  scmie  other  circumstance 
which  would  render  the  article  so  stamped  accept- 
able to  the  public,  is  property.     Ib/d. 

i  1021.  No  absolute  right  of  property  can  exist  in 
a  word.  A  person  may  enjoy  the  exclusive  right 
to  use  a  particular  word  upon  a  particular  article, 
and  yet  have  no  I'ight  in  respect  to  the  same  word 
when  applied  to  another  article.  1800,  JV.  Y.  Su- 
preme CL,  S.  7\,  Amoskeag  Manufacturing  Co.  o. 
Garner,  driBarb.  lot ;  S.  C,  6  Abb.  Pr.  {N.  "S.)  !26o. 

§  1022.  The  Amoskeag  Manirfacturing  C(mipany 
had  for  making  years  manufactured  aoiton  clotliH 
exclusively,  to  which  it  a^^plied  the  word  "iVmos- 
keag"  as  a  trademark.  The  defendauis  subse- 
quently made  x>rlnt.^^  and  also  used  the  word 
"Amoskeag."  Held,  that  defendants  had  not  in- 
vaded i)laintiirs  trademark.     Ihld. 

§  1023.  Teiins  in  common  use  to  designate  a 
trade  or  occupation,  in  connection  with  other  words 
indicating  that  a  particular  class  of  merchandise  ol 
the  same  general  description  is  si;)eciaily  dealt  in, 


i:i 


A.- 


Words. 


353 


ca.inot  be  exclusively  appropriated  by  any  one  as 
a  trademark.  The  words  "Antiquarian  Book 
Store"  cannot  be  protected  as  a  trademark.  1870, 
Supreme  Ct.  ofCal.,  Clioynski  /).  Cohen, 30  Cal.  501. 

^  1024.  Where  there  are  a  great  nunibei'  of  per- 
sons who  i)roduce  the  same  article,  "orii^inal " 
means  the  iirst  inventor.  That  is  the  meaniun'  of 
the  word  "original"  which  the  court  of  (chancery 
lias  always  recognized.  The  original  inventor  of  a 
new  manufacture,  and  persons  claiming  under  him, 
are  alone  entitled  to  designate  such  manufacture  as 
"the  original ;"  and  if  he  or  they  have  been  in  the 
habit  of  so  designating  their  manufiuUure,  an 
injunction  will  be  granted  to  restrain  another  manu- 
facturer from  applying  the  designation  to  his  goods, 
1871,  Rolls  Courts  Cocks  «.  Chandler,  Law  11.  11 
Eq.  446;  S.  C,  19  Weeldn  R.  593;  S.  C,  >24  Lam 
Times  {N.  S.)  379;  S.  C,"  40  L.  J.  R.  (]Y.  S.)  C/i. 
575.     And  see  §  GIO. 

§  1025.  The  original  inventor  of  a  sauce  known 
as  "Reading  Sauce"  had  by  long  acquiescence  lost 
the  right  of  preventing  other  persons  from  manu- 
facturing and  selling  a  similar  article  under  the 
same  name.  The  plaintiff,  who  was  successor  in 
trade  of  the  original  inventor,  described  his  sauce  as 
"The  Original  Reading  Sauce,''  and  on  a  bill  by 
him  to  restrain  the  defendant  from  selling  his  sauce 
by  the  same  title,  an  injunction  was  granted  against 
the  use  of  the  word  "original,"  notwithstanding 
the  original  inventor's  said  acquiscence.  There  was 
no  evidence  that  the  defendant  had  ever  sold  any 
of  his  own  Reading  Sauce  as  the  plaintiff's  Reading 
sauce,  or  that  any  one  had  ever  purchased  the 
defendant's  sauce  in  mistake  for  the  plaintiff's 
Reading  Sauce.     Ibid. 

23 


!^jj-aBppp 


11 


If; 


'I 


,1 

If  -N • 


ft   ;* 


364 


Words. 


§  1026.  When  the  spring  lirst  known  as  and 
named  "Congress  Spring"  produces  natural  min- 
eral water  of  peculiar  medical  and  curative  i)r<)« 
j)erties,  possessed  by  no  other  spiing,  the  words 
"Congress  Water"  and  "Congress  Spring  Water" 
approjiriately  indicate  the  origin  and  ownership  of 
the  water  flowing  from  Congress  Spring,  and  the 
woi'd  "  Congress,"  used  in  connection  with  the  bot- 
tling and  sale  of  such  water,  is  a  proper  and  legiti- 
mate trademark.  1871,  JV.  Y.  (hurt  of  Appeals, 
The  Congress  and  Empire  Spring  Company  «.  High 
Rock  Congress  Spring  Company,  4;)  N.  Y.  291 ;  S, 


C,  10  Abb.  Pr.  {N.  S.)  348; 


reversing 


S.   C,  f)? 


Barb.  526. 

§  1027.  Undoubtedly  words  or  devices  may  be 
adoped  as  trademarks  which  are  not  original  inven- 
tions of  him  who  adopts  them,  and  courts  of  equity 
will  protect  him  against  any  fraudulent  appropri- 
ation or  imitation  of  them  by  others.  Property  in 
a  trademark,  or  rather,  in  the  use  of  a  trademaik  or 
name,  has  very  little  analogy  to  that  which  exists 
in  copyrights,  or  in  patents  for  inventions.  Words 
in  common  use,  with  some  exceptions,  may  be 
adopted,  if,  at  the  time  of  their  adoption,  they  were 
not  employed  to  designate  the  same  or  like  articles 
of  x>i"oduction.  The  office  of  a  trademark  is  to 
point  out  distinctively  the  origin  or  ownership  of 
the  article  to  which  it  is  affixed  ;  or,  in  other 
words,  to  give  notice  who  was  the  x^i'oducer.  This 
may,  in  many  cases,  be  done  by  a  name,  a  mark,  or  a 
device  well  known,  but  not  previously  applied  to  the 
same  article.  1871,  U.  aS'.  Sif,pre//ie  Cotnt,  Dalawaro 
and  Hudson  Canal  Company  t.  Clark,  13  Wall.  311. 

§  1028.  Though  it  is  not  necessary  that  the  word 
adopted  as  a  trademark  should  be  a  new  creation, 


WOKUS. 


IJoC 


never  before  known  or  used,  tlieic  nie  some  limits 
to  the  ri<:;iit  of  selection.  This  will  be  manifest 
when  it  is  considered  tlmt  in  all  cases  where  ri<ihts 
to  the  exclusive  us(?  of  a  ti'ad(^mark  are  invaded,  it. 
is  invariably  held  that  ilie  essence  of  the  wi'on<; 
consists  in  the  sale  of  the  ijoods  of  one  manufac- 
turer or  vendor  as  those  of  another  ;  and  it  is  (tidy 
when  this  false  rei)resentation  is  directly  or  indi- 
rectly made  that  the  party  who  appeals  to  a  court 
of  equity  can  have  relief.  This  is  the  doctrine  of 
all  the  authoritie.'i.     Ibid. 

%  1029.  Plaintilf  had  been  en<2:a<j;ed  since  1851, 
in  mannfactui'int!;  gin  in  Holland;  the  name 
"  Wolfe's  Schiedam  Aromatic  Schnapps '"  impressed 
on  the  bottles  and  formint^  part  of  the  labels  was, 
devised  by  him  to  denote  his  fjjoods  ;  in  the  trade 
this  name  was  fully  leco^nized  as  his  trademark  ; 
the  phrase  "  Schiedam  Schnapi)s"''  was  i'ully  re''og- 
nized  as  his  peculiar  pioperty,  in  that  it  expiessed 
the  origin  and  ownership  of  his  goods,  and  sug- 
gested to  the  general  publi(%  who  had  ocasion  to 
buy  gin,  the  liquor  made,  imported  and  l)ottled  by 
him.  Defendants  had  foi'  some  time  been  [tutting 
up  and  selling  a  gin  adulterated  with  water  in  l)ot- 
tles  similar  in  appearance  to  those  of  itlaintill's. 
with  labels  which  were  merely  colorable  imitations 
of  the  name,  mark,  devices  and  symbols  of  plain- 
tiff, being  headed  ''  Wolfe's  Aromatic  Schiedam 
Schnapps,"  and  signed  at  the  foot  ''Wolfe"  in- 
stead of  the  '"  Cdoljdio  Wolfe"  of  the  genuine 
label,  and  with  words  blown  on  the  sides  of  the 
bottles  well  calculated  to  mislead  a  purchaser  who 
did  not  make  an  unusually  careful  scrutiny.  "It 
is  vain  for  defendants  to  urge  that  the  sevei-al 
words  which  compose  the  name  given  by  plaintiff 


U^^  W 


■'fif'Iflil    - 


'^  7'WP" 


356 


W0RD8. 


to  his  goods  are  not  new.  Tlis  combination  of  these 
words  is  proved  to  liave  l)een  new,  and  it  is  proved 
to  indicate  the  origin  and  ownrrsliip  of  the  liqjior, 
and  tile  defeiuhmts  have  no  ri<^ht  to  iileli  (liis  corn 
bination.  or  any  important  prirt  of  it,  in  .snch  a  way 
as  to  mislead  the  pni-cliaser  as  to  its  I'eal  origin  and 
ownership."  Defendants  vv«Me  enjoined  fnmi  s(;ll- 
iii;?  anv  article  iimhM' the  name  of  "Wolfe's  Aro- 
niatic  Sciiiedam  Schnapps"  or  "  Aromatic  Scliic- 
dam  Schnapi)s"  or  ''  Sciii<Hhun  Schnapi)s,"  or  from 
iisin.u;  any  imitation  of  said  name.  1872,  i^uprc.me 
at.  of  Loll  in  to  ua^  Wolfe  w  Barnett,  24  La.  An. 
97.     But  see  jig  048,  061,  004. 

§  10:50.  Plaintiff  claimed  to  be  solely  and  exclu- 
sively possessed  of  and  entitled  to  the  recipe  for 
making  a  certain  medical  preparation  or  ointment 
called  '•  Dr.  Johnson's  or  Singlet(m's  Golden  Oint- 
ment"' or  "Singlet(m's  Golden  Eye  Ointment," 
known  in  the  trade  and  to  the  medical  profession 
and  the  public  generally  by  the  name  of  "The 
Golden  Ointment."  It  was  alleged  that  the  receipe 
was  discovei-ed  between  two  or  three  hundred  yeais 
ago  bj'^  Dr.  Johnson,  a  celebrated  physician.  The 
defendant  had  for  some  time  past  sold  a  prepara- 
tion called  "Dr.  Rooke's  Golden  Ointment,"  and 
the  suit  was  instituted  by  plaintiif  for  an  injunc- 
tion to  restrain  defendant  from  selling,  or  publish- 
ing or  advertising  for  sale  any  ointment,  or  medical 
preparation  in  the  nature  of  anointment,  under  the 
title  of  "Dr.  Rooke's  Golden  Ointment,"  or  under 
any  other  title  or  description  whicli  should  be  an 
infringement  of  the  title  and  de^.ignation  of  the 
plaintiff's  "Golden Ointment,"  on  the  ground  that 
the  plaintilf  had  an  exclusive  right  to  the  use  of 
the  word  "Golden,"  as  applied  to  ointment.     The 


wm 


Woiins 


:}r>7 


right  to  the  descriptiofi  "(folden  Ointment" 
was  the  subject  of  liti<^ution  as  far  back  as  IS'.V2, 
and  in  the  case  iit  that  tiin"  before  the  (MMirt  the 
plaintiff  obtained  an  injunction.  Plaintilf  moved 
for  an  interlocutory  irijun<'tion.  The  Vice  Chan- 
cellor said  that,  considerin<;  the  exi.stin.i;  state  of 
the  authorities,  all  he  (m)u1(1  decide  at  ])res«'nt  uas, 
that  he  was  not  at  liberty  to  grant  an  interlocutory 
injunctitm,  but  must  order  the  motion  to  stand 
over  to  the  hearin<r  of  the  cause.  187:2,  V.  (,\ 
WiekcuH,  Green  e.  llooke,   W.  N.  187:2,  4t). 

§  1031.  Where  words  or  names  are  in  common 
use,  no  one  person  can  claim  a  special  appropria- 
tion of  them  to  his  peculiar  use  ;  but  where  words 
and  tlie  allocations  of  words,  have,  by  lonu"  use,  be- 
come known  as  designatin*^  the  artich^  of  a  par- 
ticular manufacturer,  he  acc^uires  a  right  to  I  hem, 
as  a  trademark,  which  competing  deahns  cannot 
fraudulently  invade.  The  essence  of  the  wrong  is 
the  false  representation  and  deceit.  When  the  im- 
proper design  is  apj)arent,  an  injunction  should  be 
issued.  1873,  N.  F.  JS/tprc/H'  CL  d.  7'.,  J.ea  (\ 
Wolf,  15  Abb.  Pr.  {N.  i^.)  1  ;  S.  C,  1  T.  &  C.  026  ; 
S.  C,  4G  IIoio.  Pr.  157  ;  modifying  S.  C,  13  Abb. 
Pr.  {N.  JS.)  380. 

§  1032.  Words  which  in  their  ordinary  and 
universal  use  denote  the  virtues, such  as  "  Charity," 
"  Faith,"  &c.,  cannot  ordinarily  be  appropriated  by 
any  one  as  a  title  or  designation  for  a  book,  play, 
&c.,  written,  &c.,  by  him,  tieating  or  enfcjrcing,  sym- 
bolizing, &c.,  a  virtue,  to  the  exclusion  of  any  other 
person  who  may  write,  &c.,  a  book,  play,  &c.,  treat- 
ing upon,  enforcing,  symbolizing,  &c.,  the  same 
virtue.  There  may  be  cases  where  a  title  is  made 
use  of  in  bad  faith,  or  to  promote  some  imposition, 


-.^.WlffTgT^ 


1,^  I, 


M  4 


358 


Words. 


U', 


i:'f 


Is 

I,* 


or  to  inflict  a  wrong,  when  a  court  of  justice  sliould 
interfere  to  prevent  its  use  or  to  compensate  a 
party  who  has  in  consequence  sustained  an  injury. 
1874^  N.  Y.  Superior  Ct.  S.  T.,  Isaacs  ».  Daly,  39 
N.  Y.  Superior  CI.  (7  /.  ct-  S.)  511. 

^  l();>;i.  Tliere  can  be  no  right  to  the  ui-e  of 
mere  generic  words.  Hence,  "Julienne,"  designat- 
ing a  manufactured  article  for  julienne  soup,  does 
not  denote  origin  or  ownership,  and  like 
"Schnapps"  and  "Club  House  (Tin,"  it  is  a  word 
used  merely  to  designate  the  article  or  its  quality. 
1875,  N.  Y.  Super  lor  Ct.  S.  T.,  Godillot  v.  Hazard, 
40  iroi(\  Pr.  r>. 

$^  1034.  T!ie  words  "conserves  alimentaire," 
which  are  alike  applicable  to  every  descrijjtion  of 
l)reserved  or  dessicated  food,  do  not  relate  exclu- 
sively to  the  name  or  quality  of  any  particular  pre- 
paration, and  are  therefore  the  sul)je(;t  of  an  ex(;lu- 
sive  appropriation  in  connection  with  words  wiiiv^h 
do  not  denote  the  name  or  quality  ;  and  in  that 
sense  they  may  be  regarded  as  designating  the  true 
origin  or  ownership  of  a  manufacture  upon  the 
label  on  which  they  appear.     Ibid. 

%  1035.  A  copy  of  the  coat  of  arms  of  the  city 
of  Paris,  when  in  connection  with  other  marks, 
words  or  devices,  not  denoting  name  or  quality, 
will  cover  a  property  in  it,  which  will  prevent  its 
use  in  the  same  ('onnection  or  combination  by 
another  person.     Ibid. 

%  1030.  The  words  "consca'ves  alimentaire,"  or 
the  coat  of  arms  of  the  city  of  Paris  as  a  symbol, 
used  upcm  packages  of  "Juiienne"  for  julienne 
soup,  could,  if  it  was  necessjuy,  })e  separately 
legarded  as  a  tiadeujark.     Obiter.     1 1)  Id. 

%  1037.      Where  it   was    shown   that   the  word 


Words. 


359 


?s  alimentaiie,"  or 
Paris  as  a  symbol, 
line"  for  julienne 
uv,  he  separately 
/•."  /hid. 
vvn   that   the  word 


"Caporal"  had  been  used  in  connection  with  manu- 
factured tobacco  for  many  years  prior  to  its  appro- 
priation by  the  plaintifl:  as  a  trademark  it  was  held, 
that  he  was  not  entitled  to  its  exclusive  use  as  a 
trademark  for  tobacco.  1877,  JV.  Y  Supreme  CL  aS'. 
2\,  Kinney  v.  Basch,  unreported. 

§  1038.  The  symbols  of  a  crown,  a  horseshoe, 
and  words  "Best,"  "Scrap,"  "Plating,"  &c.,  are 
symbols  and  words  common  to  the  iron  trade. 
1877,  V.  C.  Ifaluis,  In  re  Barrow's  Application,  4(3 
L.  ./.  li.  (iV.  JS.)  Ch.  450 ;  and  see  S.  C,  on  appeal, 
25  Weekly  Ji.  664. 

See  Desceiptive  Name,  Fancy  Name,  and  also 
§193. 


\-2»W!lfPff" 


■  !i: . 


J> 


TRADEMARK    TABLE. 


EXCLUSIVE   OF  FRENCH   CASES. 


I.  Fancy  Names  and  Devices  Puotected. 


wm 


'''- Pessendede''''  (watches).  18:33,  Vice  Chancel- 
lor's Ct.,  Eng.,  Gout  v.  Aleploglu. 

"//.  //.  G"  (ploughshares).  18:U,  Vice  Chan- 
cellor'B  Ct.,  P^ng.,  Ransom  t.  Bentall. 

'"'' Morrisoii  s  Uiiiiier.sal  Medicine.'^''  1841,  Com- 
mon Pleas,  Eng.,  Morrison  v.  Salmon. 

"  Taylor' a  Persian  Threadr  1844,  U.  S.  Cir- 
cuit Ct.,  Stouy,  J.,  Taylor  ii.  Carpenter  ;  184(5,  N. 
Y.,  Ct.  of  Errors,  Taylor  t\  Carpenter  ;  1854,  Vice 
Ch.  ^Vo()l),  Eng.,  Taylor  r-.  Taylor. 

'-'- Ethiopian''''  (stockings).  184G,  Vice  Chancel- 
lor's Ct.,  Eng.,  Hine  «.  Lart. 

''Chinese  Liniment:'  1849,  U.  S.  Circuit  Ct., 
Ind,,  Coffeen  v.  Brunton. 

''Pain  Killer y  1850,  Sup.  Ct.,  R.  I.,  Davis  ?). 
Kendall ;  18G7,  Vice  Ch.'s  Ct.,  Canada,  Davis  v. 
Kennedy. 

"  Genuine  Yankee  Soap:''  1857,  N.  Y.  Superior 
G.  T.,  William  i).  Johnson  ;  1803,  N.  Y.  Superior 
S.  T.,  Williams  g.  Spence. 

[3C1J 


■^s 


SffPi 


362 


Trademark  Table. 


Is!  : 


IS. 


i; 


'^  Cocoa ine^''  (Infriiia:ement :  ^^  Coco'me'^ ).  1859, 
N.  Y.  Superior,  18G7,  N.  Y.  Court  of  Appeals, 
Burnett  v.  Phalon. 

"  lior/e?'  WlU/ams  Long  Cloth:'  18G0,  Sup.  Ct., 
R.  I.,  Barrows  ».  Knight. 

"  Dr.  Morsi^s  Indian  Root  P Ills''  1860,  N.  Y. 
Sup.  S.  T.,  Comstock  v.  White. 

''Cross  Cotton."  1861,  Vice  Ch.  Wood,  Eng., 
Cartier  c.  May. 

''Excelsior"  (soap).  1863,  Vice  Ch.  Wood, 
Eng.,  Braham  v.  Bustard. 

"L.  L."  (whiskey).  1863,  Lord  Ch.  Brady, 
Ireland,  Kinahan  v.  Bolton. 

"Diamond  State""  (matches).  1865,  N.  Y.  Su- 
perior, G.  T.,  Swift '«.  Dey. 

"  303"  (pens).  1877,  N.  Y.  Supreme,  1872;  N. 
Y.  Com.  of  Appeals,  Gillott  v.  Esterbrook, 

"Sweet  (}poponax  of  Mexico"  (perfume).  1867, 
N.  Y.  Sup.  G.  T.,  Smith  ^.  Woodruff. 

"Mrs.  Whnslow's  Soothing  Sgrup."  1867,  N. 
Y.  Com.  Pleas.  G.  T.,  Curtis  v.  Bryan. 

"Govan'-^"  (iron).     (Infringement:  "Coats*"). 

1867,  Sessions,  Scotland,  Dixon  v.  Jackson. 

"Cocoatina"      (Infringement:      "  Cocoa  fine"). 

1868,  Vice  Ch.  Malins,  Eng.,  Schweitzer  v.  Atkins. 

"  Bis^marck"  (collars).  1868,  N.  Y.  Com.  Pleas, 
S.  T.,  Messerole  v.  Tynbergh. 

"The  Hero"  (jars). 

"  The  Heroine"  (jars).  1868,  Com.  Pleas,  Phil. 
Pa.,  llowley  y.  Houghton. 


TUADKMAUK   TaBLE. 


3G3 


''Charter  OaW  (stoves).  1869,  Sup.  Ct.  Mo., 
Filley  ?j.  Fassett. 

''  BoDhia"'  (pomade).  (Inf  rincjement :  '^  Bom- 
Ihie'').     1809,  Lockwood  y\  Bostwick. 

''  Lii-ie  and  Let  Lim''  (restaurant  sigu).  Geiiin  v. 
Chadsey. 

^' Ilair s     Ver/efah/e    Sicilian    Hair    Jienewery 

1870,  Com.  Pleas,  Phil.  Pa.,  Gil  lis  v.  Hall. 

''Grenade Syrupy  1870,  N.  Y.  Sup.  8.  T.,  Rillet 
V.  Carlier. 

'^Orif/inal  Readiuff  Sauced  1871,  Rolls  Ct., 
Eng.,  Cocks  «.  Chandler. 

"Conf/resfi   Water''''  "Com/ress  Spri)ip  Water."' 

1871,  N.   Y.   Ct.    of  Api)eals,  Congress  &   Empire 
Spring  Co.  r.  High  Rock  Congress  Spring  Co. 

"  Turin''  (cloth). 

"Leopold''        " 

"  Sefton''  " 

"  Liver pooV     " 

1872,  Vice  Cli.  Bacon,  Eng.,  Hirst  d.  Denham. 

"Eureka''  (shirts).  1872,  Ch.  Ct.  of  Appeals, 
Eng.,  Ford  v.  Foster. 

"Exactly  tweloe  yards  "  (in  Turkish). 
"  Exactly  I  iieloe  yards''''  (in  Armenian). 
"■  Exactly  tweloe  yards'"  (in  Roman).     1872,  Ch. 
Ct.  of  Appeals,  Eng.,  Broadhurst  i\  Barlow. 

"  Aromat ic  Schiedam  Schnapps.'"  1872,  Sup.  Ct. 
La.,  Wolfe  i\  Barnett.  Contra.,  Wolfe  w.  Goulard  ; 
Burke  ??.  Cassin. 

"Keystone  Line'"'  (steamships).  1872,  Com. 
Pleas,  Pliil.  Pa.,  Stetson  r.  Winsor ;  1872,  Com. 
Pleas,  Phil.  Pa.,  Winsor  v.  Clyde. 


8G4 


TiiADEMAiiK  Table. 


'' The '^  Shirr'  1872,  U.  S.  Circuit,  Conn.,  Mor- 
rison 0.  Case. 

''Mark  Twain''  {iioni  deplume).     187:3,  N.  Y. 
Sup.  S.  T.,  Clemens  d.  Such. 

''Conserves  Allmcntalre.''''    187i5,  N.  Y.  Superior 
S.  T.,  God i Hot  c.  Hazard. 

"I/"  U'i,i,^arettes).  1877,  N.  Y.  Sup.  S.  T., 
Kinney  v.  Basch,  and  see  Kinney  w.  Allen. 

"/;.  B.  ir  (iron).  1877,  Cli.  Cr.  of  Appeals, 
Eng.,  In  re  Barrow's  Api)lication. 

See  also,  1842,  Crawshay  v.  Thompson  ;  18(51, 
Henderson  v\  Jorp ;  1802,  Cartier  o.  Carlile  ;  180:}, 
Hall  (\  Barrows  ;  180:},  Edelsten  v.  Eldesten  ;  1803, 
Wotheispoon  /'.  Gray;  1871,  Sold  v.  Geisendorf ; 
1872,  Smith  o.  Reynolds  ;  1875,  Morse  v.  Cornwell, 
and  other  cases  in  the  digest. 


II.  Geographical  Names. 

a.  Protected. 

"'Anatolia  "  (liquorice).     1804,  Vice  Ch.  Wood, 
Eng.,  Mc Andrew  v).  Bassett. 

''Se'ixo"    (wine).      1800,    Lord   Ch.    Cran worth, 
Seixo  v..  Provezende. 

'Tall  Mall  Guinea  CoaV      1800,   Ch.   Ct.    of 
Ap[)eal,  Eng.,  Lee  v.  Haley. 

"(ilenjlehV    (starch).      1872,   House  of    Lords, 
Wotherspoon  i\  Currie. 

"  LeopohWiall"     (kainit).       1872,      Vice     Ch. 
Wickens,  Eng.,  Radde  v.  Norman. 


m  inw 


Tradkmauk  Tat?le. 


365 


"A/tTOTi"  (coment).  187:?,  N.  Y.  Com.  of  Ap- 
peals, Newrnjui  r.  Alvoid. 

"  Worrr,sf(rfi/tire  "  (sauce).  187:},  N.  Y.  Sup.  S. 
T.,  Lea?'.  Wolf. 

"  A'p/)o/l///or/s ""  (niiiieral  wafer).  187.'^,  Vioe  Ch. 
Bacon,  Vavj^.,  Api^olliuaris  (Jo.  (Litiiifed)  w.  Noirish. 

''S/.  Jrrmr.'i''  (ci,i?arettes).  1877,  N.  Y.  Sup.  S. 
T.,  Kinney  r.  IJascli. 

And  see  other  cases  in  the  digest. 

h.   Not  prolcctnd. 

''Coloniair  1804,  Rolls  Ct.,  Eng.,  Colonial 
Life  Assurance  Co.  i).  Home  and  Colonial  Life  As- 
sui'ance  Co.  (Limited). 

''  Molhie,  inr  (ploughs).  1870,  Sup.  Ct.  111., 
Canth^e  /'.  Beere. 

''  Lavhnmivna:'  (coal).  1871,11.  S.  Sup.  Ct., 
Delaware  and  Hudson  Canal  Co.  ?\  Clarlv. 

''Glcndon:'  (iron).  1874,  Sup.  Ct.,  Pa.,  Glen- 
don  Iron  Co.  V.  Uhler. 

''Durham''  (tobacco).  1875,  Sup.  Ct.,  N.  C, 
Blackwell  v.  Wright,  and  see  Blackvvell  v.  Armis- 
tead. 

And  see  other  cases  in  tlie  digest. 

III.     Descriptive  Names   axd  AVouds   in   Com- 
mon Use  not  Pkotected. 


''Dr.     Johnsoiis     Yellow    Ointments       1783, 
Kings  Bench,  Singleton  >\  Bolton. 

"  Velno\s  Ver/etahh:  Si/rupr     1813,  Vice  Chan- 
cellor's Ct.,  Eng.,  Canham  v.  Jones. 


366 


Trademark  Table. 


'^  TJiouisoninn  Medicincsr  1837,  Sup.  Jiid'lCt., 
Mass.,  Thomson  «.  Winchester. 

''A.  V.  iV  (tickings).  1840,  N.  Y.  Superior  S. 
T,,  Amoskeauf  Ml'iJj.  Co.  o.  Spear. 

"  Ci/lhi(ler''  (glass). 
''Lake''  (do.) 

"  New  YorJc''  (do.) 

''Galen''  (do.)     18.j3,  K    Y.    Sup.    S.    T., 

Stokes  v.  Landgralf. 

"  Bahn  of  Tlioasanrl  Flowersr  1857,  N.  Y. 
Sn])eri<n\  S.  T.,  Fetridge  v.  Wells  ;  and  see  Fetridge 
r.  Meiehant. 

"Aromatic  ^cliiedavi  ^elniappft."  ISHO.  N.  Y. 
Sup.  S.  T.,  Wolfe  1).  Goulard;  1873,  Snp.  Ct.,  Cal., 
Buike  r.  Cassin.     Contra.,  Wolfe  v.  Barnett. 

"  Chib  House  Glnr  1860,  N.  Y.  Superior,  G. 
T.,  Corwin  i\  Daly. 

"Para fine  OIV  1862,  A^ice  Ch.  Wood,  Eng., 
Young  I),  ^faorae. 

"Priz^-  Medal  1862"  (pickles).  1863,  Vice  Ch. 
Wood,  Eng.,  Batty  v.  Hill. 

"Extract  of  Nieiht  Blooming  Cereusr  1864, 
Com.  Pleas,  Phil.  Pa.,  Phalon  r.'Wright. 

"Old  London  Doclc  Gin.r  180.-),  N.  Y.  Com. 
Pleas,  S.  T.,  Bininger  v.  AVattles. 

"Parlor  Match:'  N.  Y.  Superior,  G.  T., 
Swift  T.  Dev. 

"IMh rook's"  (school  apparatus).  1860,  Chi- 
cago, Siip(M'ior  Ct.,  Sherwood  ?).  Andrews. 

''xYe  2^^'(s  vltra"  (needles).  1866,  Vice  Ch. 
Wood,  Eng.,  Beard  i\  Turner. 


Trademauk  Tablk. 


307 


''Li'ehif/s  Extract  of  Mmtr  1807,  Vice  Ch. 
Wood,  Eng.,  Liobig's  Extract  of  ^feat  Co,  (Lim- 
ited) T.  Ilanbnry. 

'■'■  Fcrro- PhospJiorated  Elixir  of  Cat i sat/a 
Barkr  1807,  N.  Y.  Com.  Pleas  ;  18*74,  N.  Y.  Ct. 
of  Appeals,  Caswell  v.  Davis. 

"  WasJiinr/  Eowderr  1808,  Sup.  Ct.  Cal., 
Falkinburgli  v.  Lucy, 

''  Desiccated  Coflfi.sJir  1808,  N.  Y.  Com.  Pleas. 
G.  T.,  Town  V.  Stetson. 

"  WJicclcr  and,  Witsoii^''  (sewing-macliiries), 
1809,  Vice  Cli.  James,  Eng.,  AVheeler  and  AVilson 
Mfg.  Co.  r.  Shakespeai.  But  see  Singer  ^Ifg  Co. 
?;.  Kimball,  and  Singer  Mfg.  Co.  i).  AVilson. 

'' Autiquarian.  Boole  Stored  1870,  Sup.  Ct. 
Cal.,  Chovnski  v.  Cohen. 

"  A  No.  1 "       (ploughs). 

''AXNo.V  do. 

"i\7>.  1"  do. 

"XiV^o.  1"  do. 

"i\^o.  ;r'  do. 

''B.No.V  do.  1870,  Sup.  Ct.  111.,  Can- 
dee  T.  Deere. 

'' Novrishinff  Stout:'  187:},  Vice  Ch.  Malins, 
Raggett  r.  Findlater. 

"  Gold  Medair  1874,  N.  Y.  Ct.  of  Appeals, 
Taylor  i\  Gillies. 

''Char it ir  (name  of  a  play).  1874,  N.  Y.  Su- 
perior S.  T.,  Isaacs  v.  Daly. 

''■Julienne''''  (for  julienne  soup).  1875,  X.  Y. 
Sup.  S.  T.,  Godillot  v.  Hazard. 


^;^|jj— jjjjggj^l 


368 


Trademark  Table. 


|i'  i 


"  Turl-rr  Ffprhu/  Brdr  1875,  U.  S.  Circuit  111., 
Tiickor  Mfg.  Co.  v.  Boyington. 

"7?r.<fr'  (iron). 

''Scrap''  do. 

'' Plaling''         do. 

1877,  Ch.  Ct.  of  Appeal.  In  re  Barrow's  Applica- 
tion. 

"  Cherry  PecforaV  (niedicino  for  coughs,  colds, 
&c.).  1877,  N.  Y.  Com.  Pleas,  G.  t!,  Ayer  v. 
Rnshton." 

And  see  Edelsten   v.   Vick ;    Wotherspoon  «. 
Gray  ;  and  other  cases  in  the  digest. 


IV.    Alleged  Trade.aiakks  not  Protected,  by 
Reason  of  Misrepresentation. 


'■'' ITowqua' s  Mixture. ''     18.'>7,  Pidding  «.  How. 

"■Medicated  Mexican  Balm'"'      1842,   Perry  v. 
Truetitt. 

''Dr.  W I  star's  Balsam  of  Wild  GUerry.'"  1847, 
Fowle  V.  Spear. 

"FlatelVs  Patent  Kltcliener.''     1853,  Flavell  v. 
Harrison. 

"Kathalron."     1855,  Heath  v.  Wright. 

"  Balm  of  Tliousand  Floioers."     1857,  Fetridge 
r.  Wells.    And  see  Fetridge  ?>.  Merchant. 

"Mecn  Fun:'     1800,  Hobbs  r.  Fiancais. 

*  Now  in  the  Court  of  Appeals  for  review. 


\\  '■''' 


If 


TllADKMAIIK   TaHM: 


nni) 


''Extract  of  K'kjU  BJoohuikj  Cn-iusr  IHC.-I, 
Plialon  r.  Wri'^^ht. 

"  Pdfnit  Vlinnhaijo  UnicUtJcs:'  IS(5(;,  Moriiaii 
r.  M'Adain. 

^'doh/rii  Crown  Ch/arsy  IWJD.  Palmer  v. 
llairis. 

''■Ldirtrfi  Bloom  of  YontJi^or  Liquid  levari." 
1872,  Laird  t\  Wilder. 

"J/r/.vo^r.s  ratntt.  Korewt)fr  '^{\  ISns."  1874, 
Consolida/ed  Fi'iiit  Ja:-  Co.  v.  DorlliiiLrer. 

'■'Capvine  Pta.'^fers."  1877,  Seabiiry  f\  Gios- 
\e\mv. 

See  also.  1848,  Patridge  ?i.  Menek  :  180,"),  LeaflnM- 
Cloth  Co.  (Limited)  v,  American  Clotli  Co.  ;  18(;(). 
Sherwood  v.  Andrews ;  1875,  Eastrourt  r.  Esr- 
coiirt  Hop  Essence  Co.  (Limited),  and  other  cases 
in  the  digest. 


V.     IxjuNCTioNS    Refused  by  Reason  of   De- 
lay, ACQUIESCEXCE,  FaILUIIE  OF   PlIOOF,  AND 
AVaNT  of   JURISDICTIOX. 


L-idge 


''Great  MoguV  (cards).  1742,  Blanchard  v. 
Tlill. 

"M.  or  (tin  plates).  18.")7,  Motley  >\  Down- 
man. 

1847,  London  and  Provincial  Law  Assuiance 
Society  v.  London  and  Provincial  Joint  Stock  Life 
Ins.  Company. 

"London  Manure  Coy     1848,  Pursers.  Brain. 
24 


! 


-«*ffir^ 


370 


TlJADEMAUK   TaIJLK. 


18.")4,  Amos  «.  Kini;- ;  IS.m,  Meiiinuick  Mfg-.  Co. 
».  Gariior. 

'^  Ara mi nfjo  Millar      1800,   Colloday  /'.  Biiiid. 

1800,  (Jiooii  ?'.  Shepherd;  1800,  l^'iird  r.  Tiiriier; 
180(5,  Aiiiswoith  v.  Wahiiesley. 

''Ll(>i/(l\s  Eiuvvsisr     1870,  lloveiiden  v.  Lloyd. 

''mrrr    Brook    WhisJcci/r      1871,    Seltzer    /\ 
Powell. 

1871,  Isaacson  ?).  Tliompson. 

''doldcn  Ohdnientr     187-2,  Green  ?5.  Rooke. 

'"'  CMorodi/ne.''''  1874,  Browne  ??.  Freeman. 

1874,  Rod<^er.s  ??.    187."),   Rodgers ;    Eastcoiirt   v. 
Esteourt  Hop  Essence  Co.  (Limited). 

And  see  other  cases  in  the  digest. 


VL    Names    of  Hotels    axd    Vehicles  ;  Busi- 
ness Signs,  &c. 


''  Inrhify  IToiisr,'"  protected.     1850,  N.  Y.  Supe- 
rior S.  T.,  Stone  v.  Carlan. 

'•'' Revere  Iloitse,''''  protected.     18,')1,   Sup.  Jnd'l 
Ct.  Mass.,  March  r.  Billings. 

''In)inp  House,''  protected.     IS.")!,  N.  Y.,   Su- 
perior S.  T.,  Howard  /'.  Henriques. 

''Howes  Balierii;'  protected.     1800,  N.  Y.  Su- 
perior G.  T. ,  Howe  «.  Searing. 

"  What  Cheer    Housed     1803,  Sup.   Ct.  Cal., 
AVoodward  c.  Lazar. 


TUADEMAUK   TaULE, 


371 


*^  McCnrrld  Jloirse,''  protected.  1804,  N.  Y. 
Sup.  (1.  T.,  .McCardel  i\  IVck. 

''Pra^roll  Thiixr;'  protected.  1871,  N.  Y.  Sii- 
l^erior,  S.  T..  I)(mz  i\  Liunb. 

'■'•  Aii/i(jii(if(((n,  Book  iSVo/V',"  not  protected. 
1870,  Sup.  Ct.  Cal.,  Choyn.ski  i\  Cohen. 

''Maviinolk  Wordrohc,''  not  protected.  1871, 
Cii'cuit  Ct.  Mi<'h.,  Gray  r.  Koch. 

"  Wood's  Hotel;'  protected.  187;'),  Circuit  Ct. 
111.,  Woods  i\  Sands. 

And  see  18:^0,  Knott  \\  Morgan;  18.");i,  Buriyess 
t.  Burgess;  18.')7  ;  Peterson  ».  Humphrey;  ISC)."). 
Glenny  n.  Smith;  1808,  Colton  w  Thomas;  1874, 
Glen  and  Hall  Ml'g.  Co.  i\  Hall  ;  187."),  Devlin  >\ 
Devlin;  1870,  Booth  w.  Jarrett ;  and  other  cases  in 


the  digest. 


VII.     Labels. 


a.     Protected, 


Siee,  1810,  Bay  t.  Day;  1831,  Bay  ?).  Binning; 
1843,  Ci'ol't  (\  Day  ;  184.i,  Coats  v.  Ilolbi-ook  ;  1847, 
Franks  v.  AVeaver;  1849,  Amoskeag  Mfg.  Co.  i\ 
Spear;  1S,')3,  Edelsten  /).  Vick  ;  18,)4,  Shrimptim  >\ 
Laight;  18^4,  Taylor  v.  Tayloi-;  18.")0,  Walton  w 
Crowley;  18.")0,  Stewart  }\  Sniithson  ;  18.')7,  Clark 
i\  Clark;  18.')7,  Williams  v.  Johnson;  1S(J1,  Dale 
?\  Smithson;  1805,  Ilarristm  i\  Taylor;  180."), 
Southoi-n  ?'.  Beynolds ;  1807,  Stephens  t.  Peel; 
1807,  Curtis  i\  ]3ryan  ;  1808,  Boardman  v.  Meriden 
Britannia  Co.  ;  1809,  Lockwood  (\  Bostwick  ;  1870, 
Dixon  Crucible  Co.  «.  Guggenheim  ;  1871,  Ilostet- 


f.f 


372 


Trademark  Table. 


ter  V.  V(3wmkle  ;  1871,  Gardner  ?'.  Bailey;  1871, 
A1)l)ott  ^5.  Baker  and  Confectioners'  Tea  Association  ; 
1872,  Blackwell  /).  Armistead  ;  187:J,  Lea  f\  Woll ; 
1874,  Brown  (}.  Mercei' ;  187,"),  Godillot  n.  Hazard  ; 
1870,  Anioskeag  Mfg.  Co.  r.  Garner  ;  1877,  Kinny 
v\  Bascli ;  1877,  Ilennessy  o.  Wheeler ;  and  otlier 
cases  in  the  digest. 


b.  Not  protected. 

See,  1840,  Partridge  ?).  Menck ;  ISno,  Foot  v. 
Lea  ;  IS,")."),  Merrimack  Mfg.  Co.  v.  Garner  ;  18G(>, 
CoUoday  ??.  Baird  ;  1803,  Wookim  v.  liatcliff  ;  18(5."), 
Leatlier  Cloth  Co.  (Limited)  v.  American  Cloth  Co. 
(Limited);  1800,  Ainsworth  «.  Walmesley ;  1807, 
Blackwell  t\  Crabb  ;  1807,  Paber  v.  Fa1)er;  1808, 
Falkinbiirgh  o.  Lucy  ;  1809,  Bass  i\  Daw])er ; 
18()0,  Ferguson  v.  Davol  Mills ;  1808,  Amoskeag 
Mfg.  Co.  t\  Garner ;  1871,  Scoville  g.  Toland  ;  187."), 
Blackwell  o.  Wright ;  and  other  cases  in  the  di- 
gest. 


VIIL  Publications, 


If  .-: 


I!  '1 


See,  1^02,  Walcott  i\  Walker:  18()3,  Hogg  ?t. 
Kirby ;  1810,  Lord  Byron  d.  Johnston;  1877, 
Southey  v.  Sherwood  ;  1821,  Edmonds  (\  Benbow ; 
182."),  Snowden  (\  Noah  ;  1840,  ]3ell  i\  Locke;  1840, 
Spottiswoide  ?'.  Clark;  1848,  Clark  v.  Freeman; 
18.")(),  ,b>llie  r.  Jaques  ;  18.').'),  Chappell  (\  Sheard, 
Cliappell  i\  Davidson;  18r)0,  Prowett  r.  Mortimei" ; 
18.VJ,  Clement  v,  Maddick ;  IS.V,),  Dayton  r. 
AVilkes;  1859,  Ligram  ?«.  Stiil' ;  18.')9,  Bradbury 
V.   Dickens;   1800,    Brook   o.  Evans;    1800,    Har- 


Trademark  Table. 


373 


per  c.  Pearson  ;  18G2,  Burrows  o.  Foster  ;  1804. 
Browne  v.  Fi'eein;in  ;  1807,  Houg  r.  Maxwell,  Max- 
well v.  llo.u'.i;' ;  1808,  Stevens  i\  Paine;  1808. 
Stephens  i\  DeCJonto  ;  18(58,  Kelly  t).  llutton  ;  180!>, 
Dixon  r.  IIol(l<.'n;  180!),  Bra(Il)ury  r.  Beeton  ;  180;), 
WlieehM*  and  Wilson  Ml',^•.  Co.  n.  Shakespi^n- ; 
lS7-i,  Os.i^^ood  t\  Allen;  1873,  Christie  v.  Cliiisti.>  ; 
1873,  Clemens  i\  Such;  1874,  Isaacs  v.  Daly  ;  ]87,"), 
Tallcott  V.  Moore  ;  1870,  American  Grocer  Publish- 
ing Association  v.  Grocer  Publishing  Co  ;  and  other 
cases  in  the  digest. 


IX.    Firm  Names. 

Sec,  1701,  AVebster  ?\  Webster;  183."),  Lewis  r. 
Langdon  ;  1857,  Peterson  y.  llumpluvy  ;  18,-)8. 
Fenn  y\  Bolles ;  1S.)9,  Churton  «.  Douglas;  1801. 
Bowman  ti.  Floyd  ;  1804,  Johnson  y.  Ilelldy  ; 
1804,  Bury  v.  13edl'ord  ;  180.-),  Banks  r.  Gibson  ; 
1800,  Dickson  d.  M' Master  ;  1800,  Scott  v.  Scott; 
18(57,  Hodgers  /'.  Taintcn*;  1871,  Reeves  r.  Deincke  ; 
187:2,  Weed  i\  Peterson;  1872,  Scott  d.  llowland  : 
1872,  Morse  v.  ilall ;  1872,  Sohier  v.  Johnston; 
187."),  Phelan  v.  CoUender ;  1870,  Carmicdiael  i\ 
Lati)ner ;  and  other  cases  in  the  digest. 


X.     Restraint  ix  the  Use  of  Oxe's  Own 

Name. 


See,  1824,  Sykes  v.  Sykes  ;  1843,  Qvoh  v.  Day  ; 
1847,  Ro'igers  i\  Nowill ;  18:)(),  llolloway  v.  IIollo- 
way  ;    18.">;{,   Burgess  w.  Burgess ;    18.")7,    Claik    a. 


374 


Trademark  Table. 


Clarlv  ;  18.");'),  Sor.thoi'n  v.  Reynolds  ;  18G7,  Howe  v. 
Howe  Miicliine  Co, ;  1800,  Firnei-son  v.  Badger  ;  1870, 
Slonebi'eaker  v.  Stonebroaker ;  Coats  t.  Piatt; 
187.1,  La/enby  ?j.  White ;  1872,  James  t.  James; 
1872,  llallett  v.  Cumston ;  1872,  McCrowaii  Bros. 
Pump  and  Machine  Co.  v.  Mcdowan  ;  1872.  Meri- 
den  Bi'itanniii  Co.  w.  Parker;  1874,  W'olfe  n. 
Bnrke;  187."),  Meneely  v.  jMeneely  ;  187."),  Devlin 
'i).  Devlin  ;  187;"),  (iourard  «.  Trust  ;  187(5,  Deekei-  /'. 
Decker;  1877,  Prince  Metallic  Paint  Co.  v.  Caibon 
Metallic  Paint  Co. ;  and  other  cases  in  the  digest. 


DIGEST   OF   FRE^^CII   DECISIONS. 


BY 


FRAXCIS     rORDES, 

COUXSELLOn   AT   LAW. 


PREFATORY  NOTE. 

Before  the  revolution  tliere  were  no  tradenitvi'lvs. 
as  now  understood,  in  France.  Tliei-e  were  certain 
ohli,<i;atory  marks  required  to  be  placed  on  objects 
of  manufacture  to  desiu'iiate  the  manufactuiei',  the 
qiuUity  of  the  goods,  and  mode  of  manufacruiv. 
Ti'ademarks,  as  we  understand  them,  were,  there- 
fore, ol'  no  advantage.  In  17!U,  the  legislature 
abolished  all  laws  with  reference  to  the  surveijjaiice 
of  the  mode  of  manufacture,  and  ol)ligatoi'y  marks. 
Private  marks  soon  came  into  use,  and  being  pro- 
tected by  no  law,  were  infringed.  Tlu^  peoi)le,  also, 
were  cheated  by  spurious  goods,  l^rotection  was 
lirst  accorded  to  mai'ks  l)y  the  law  of  JS)  biuuiaiie, 
year  VI  (171)7),  relative  to  the  guarantees  of  arti- 
cles of  gold  and  silver.  This  law  obliged  each 
manufacturer  to  mark  witli  a  private  stamp,  in 
addition  to  that  of  tlie  government,  every  article  of 
gold  and  silver  that  went  from  his  factory. 

By  law  of  23  nivose,  year  IX  (ISOl)  manufac- 
turei's  of  hardware  and  cutlery  at  Oilcans,  and 
by  law  of  7  germinal,  year  X  (18(12),  manufactureis 


mm 


--rr' 


.>•«  -I 

•  )  (  .» 


FuKxcH  Dkcisioxs. 


I 


of  (iiitintal  liosipiy  were  anlii()]'ize<l  to  shunp  tlieir 
^■()()(ls  with  i)rivate  marks,  ^'o  jieiialty,  liowever, 
was  named  Un-  an  iiifriiiutMuent  of  a  mark. 

Tlio  lirst  ut'iieral  law  on  tlie  siil)j('ct  of  tiade- 
mai-ks,  is  dated  2i  germinal,  year  XI(^I8(»;{).  Title 
IV  of  thai  act  ^Tanted  to  eveiy  manufacturer  or 
artisan  the  right  to  aj)ply  a  particular  mark  to  his 
jmxlucts.  and  to  obtain  the  exclusive  use  tliei(M)f, 
by  its  deposit  at  the  registry  of  the  Tribunal  of 
Conuiicrce.  Infringements  were  punished  by  the 
penalties  against  forgeiy  of  private  writings  ;  and 
damages  to  owner  of  mark. 

By  law  of  1800,  marks  wei'e  requiied  to  be  de- 
jiosited  with  the  secretary  of  the  "Counsel  des 
Prud'hommes,"  in  addition  to  their  de[)osit  at 
the  registry  of  the  Tribunal  of  Commerce. 

The  Penal  Code  (enacted  1810,  art.  14:2),  pun- 
ished by  imi)risonment  tho^e  counterfeit  in  u'  marks 

t.  1.  *? 

of  ('(unmercial  houses,  and  (art.  143),  by  degrada- 
tion fj'om  civil  rights  those  improperly  using  gen- 
uine stamps,  marks  and  seals. 

The  severe  penalties,  pronounced  against  infi-inge- 
ment  of  tlu^  above  laws,  made  their  enfoi-cement 
nearly  impossible.  The  decree  of  Septendjer  i), 
1810,  (mly  im[K)sed  a  line  of  three  hundred  francs 
on  those  who  infringed  the  marks  allowed  by  law 
of  "2\i  nivuse.  year  IX,  on  hardwaie  and  cutlery. 

In  the  interest  of  consumers,  three  decrees, 
April  1,  1811,  September  18,  1811,  and  Decem- 
bei'  2:2,  1812.  lendei-ed  marks  of  manufacture 
obligatory  on  each  cake  of  soap  made.  Omis- 
sion or  untruthfulness  of  mark,  or  any  fraud  in 
manufacture  by  the  introduction  of  substances  de- 
signed to  change  the  quality  of  the  soap,  subjected 
the  maker  to  a  line  of  three  thousand  francs. 


FuEXCii  Decisions. 


377 


By  decree  of  .Inly  "J."),  18I(>,  the  niaiiufiK'tiirei's  of 
the  eity  ol'  liouviers  wne  ui-aiitcd  I lu'  exclusive  i'i<^lit 
to  use  a  ycllnw  and  blue  Ixtrdcr  to  th(^li'  cloths.  A 
decree  of  December  '2'2,  18H),  ,ii,TantHd  to  all  other 
cities  of  France  the  li^ht  to  use  bor<h'rs  peculiar  to 


tl 


leinsclves. 


The    infrinti'euient   of    the    mark   of 


Louviers  was  itunisluMl  by  ;i  line  ;   that  of  a  city, 
the  same  as  ex[)r«'sscd  in  law  of  year   XI.     Thus, 


what  was  a  misdemeanor  in  oiif  c 


isc,  was  a  lelony 


in  the  other, 


Tl 


lese  decrees  n('\('r  went  into  execu- 


tion, as  the  lirst  was  suspended  by  notice  April  ;J0, 
1811  ;  and  the  other  was  superseded  by  that  of 
December  17.  181;},  grantini!,"  to  every  ]nanufa<'turer 
of  cloth  the  rii-iit  to  ado[)t  a  border  of  his  choice. 

Various  laws  were  made  between  1810  and  1824, 
K'cpiirin^u' .stamjjs  and  marks  to  be  placed  on  clolhs 
and  playing' cardN  by  their  manufacturers  (to  facili- 
tate the  collection  of  duties  on  foreia-n  fabrics,  &(•.), 


uid  on  poisons 


i>y  I 


)harmaceuirsts. 


The  oeneral  hnv  of  July  IS,  18:24,  left  in  I'orce  the 
law  of  vear  XI,  and  secth>ns  142  and  141}  of  the 
Penal  Code  in  leference  to  maiks.  and  sou^^ht  to 
protect  the  use  of  names  of  persons  and  places. 

In  18r)7  a  ,ii,'enei'al  law,  su[)ersedinii;  all  I'oi'mer 
laws,  in  i-elation  to  marks,  was  passed.'^'  l>ut  it 
did  not  repeal  nor  supersede  the  law  of  1824,  in  I'ef- 


Tlie  pi 


inise 


'in;i 


riv  of  miumfacturc  or  of  coinmcrfM 


IS  ^I^i(•l 


ill  ihc.  law;  inaiks  of  iiiaiiul'acturc  iiciiiu,-  tlic  inaiks  usoil  by  llie 
inainil'actiircr  to  ilistiiiiiuish  his  luaiiul'aL'Uirt's,  and  marks  of  coiii- 
iiurcc  those  I'liiploycd  by  the  iiici't'liaut  to  {li>tin,niii>ii  ihc  iioods 


bv  li 


nil. 


The  whole  jilifase  may  be  lraii>lated  liyoiie  woii 


-trademark.      Freiicli    authors,    in    translating'  tradeniai'k    into 
the    I'^iviich    lantiiia.Lje,    have   used   one  or  other  of  said   terms, 


iiKii'iiiii'  ill  I'lihritiiie  or 


7 
l)i't  ween  I'ra 


nee  aiK 


iiKiiii'ir  lie  I'iniitiicrrc. 


In  the  treaty  of  iSii'.t, 


1  the  I'nited  Slates,  tiuidtnairk  and  nKtnj'o.'  da 


juh 


iri<i>(t:    are 


•d  interehanyeably. 


>!  >n 


I'. 


378 


Fkexcii  Decisions. 


eience  to  names,  &c.,  nor  take  away  the  riglil  of 
action  Avliich  existed  under  art.  V38'2,  of  the  Civil 
Code,  for  unlawful  rivalry  in  business.  Th(^  law  of 
IS.'Ji?  is  not  intended  as  a  vc'iilieation  by  the  state  of 
the  quality  or  natui-e  of  the  nierchandise,  bur  only 
as  a  proof  of  its  ori<i,'in. 

In  IS?;}  a  law  was  made  f^ranting  the  guaranty  of 
the  government  to  the  g<?nuineness  of  a  tiademtu'k, 
by  r!i(3  stamp  of  the  government  afflxe^  under  cer- 
1.,.!   ;.;i!:idations. 

'  }'":.]■  a  trealy  made  with  Fi-ance  April  10,  1809, 
citizens  of  the  United  States  enjoy  the  same  rights 
(O  trr'dem!i"^'s  in  France  as  French  citizens.  Before 
tiie  treaty  owv  <  itizens  had  no  right  of  action  in 
France  for  infringements  of  trademaiks. 

That  the  read(n'  may  have  a  better  undei'standing 
of  the  cases  di^-estt^d,  extiacts  from  su<'h  of  the 
statutes  ref<3]]'ed  to,  as  ai'e  of  use.  are  given.  The 
statute  :\i)plicab!e  tofach  caseAvill  be  evident  cither 
from  the  date  or  dii'ect  reference  in  the  svllal)us. 

The  cases  have  been  arranged,  with  a  few  excep- 
tions, chronologically.  Those  in  reference  to 
practice  and  local  interests  have  been  omitted. 

F.  F. 

New  Yokk,  Nov.  15,  1877. 


viife; 


FRENCH    STATUTES. 


LAW  OF  22  GERMINAL  YEAR  XI  (1803). 

RELATIVE  TU   FACTOUIES  AND   AV0UKSII0P3. 

Title  IV.  Of  PrlmU  Marls. 

Art.  10.  The  infiingement  of  privute  marks, 
wliicli  every  manuiiu'tiirer  or  artisiiu  has  the  rit;ht 
to  apply  upon  the  objects  of  his  luaiitifacime,  *;ives 
rise, — 1st,  to  claiiiagvs  and  iiitei-est  to  him  whose 
mark  shall  have  been  infringed  ;  2nd.  to  the  appli 
cation  of  the  penalties  pronounced  against  foigiug 
l)rivate  writings. 

Art.  17.  The  mark  shall  be  considei'ed  as  in- 
fringed when  the  words  "  Fayon  de  '•'  "  ^•"  (style 
of)  and  at  the  end  the  name  of  another  manufac- 
turer, or  of  another  city  shall  have  been  inserted. 

Art.  18.  No  one  can  bring  an  action  for  in- 
fringment  of  his  mark,  unless  he  has  made  it  known 
at  the  beu'inning  in  a  legal  manner,  bv  the  deijosit 
of  a  copy  in  the  registry  oflice  of  the  ti'ibunal  of 
commerce  where  the  chief  place  of  manufacture  or 
the  shop  is  situated. 


CIVIL  CODE  (MARCH  21,  1804). 
Art.  1382.     Every  act  of  man  which  causes  dam- 


mfmmmm 


380 


Fkencii   Statutes. 


af^e  to  anotlier,  oblii^cs  tlio  one  bv  whose  fault  it 
has  liai)peiie(l  to  re]}air  it. 

Article  \'.\S'.].  Eveiy  one  is  responsible  i'or  the 
damaiie  which  lie  lias  caiiseil,  not  only  by  his 
act,  but  also  by  his  negligence  or  by  his  im- 
prudence. 


PENAL  CODE  (FEBRUARY  10,  18 JO). 

Alt.  142.  Those  who  shall  have  count.'ifeited  the 
marks  inteudetl  to  be  placed  in  the  name  of  the 
government  on  the  dilferent  kinds  of  agricultural 
products  or  meicliandise,  or  who  shall  have  made 
use  of  these  false  marks ;  those  who  shall  liave 
counterfeited  the  seal,  stamp  or  mark  of  anyone  in 
authority,  or  of  a  private  banking  or  comuiei'cial 
establishment,  oi-  who  shall  have  made  use  of  coiiii- 
tei'feit  seals,  stamps  or  mai'ks,  shall  be  punished  by 
imprisonment. 

(In  18(58,  this  law  was  amended  and  modified.  It 
is  not  necessary  for  our  purpose  to  give  amend- 
ment.) 


I  ''' 


LAW  OF  JULY  28,  1824. 

Article  1st.  Whosoever  shall  either  affix,  or 
make  a])pear  by  addition,  retrenchment  or  by 
any  alteration,  upon  manufactured  articles,  the 
name  of  a  manufacturer  other  than  he  who  is  the 
producer,  or  the  name  of  a  manufactory  other  than 
that  where  said  articles  were  made,  or  linally, 
the  name  of  a  place  other  than  that  of  the 
manufacture,  shall    be    punished    by    the    jHinal- 


FiiENCii  Statutes. 


881 


ties  si^ecified  in  article  4:2;}  of  tlie  Penal  Code,  witli- 
ont  prejndice  to  a  decree  for  d;nn:i,L!;e.s  if  tliere  be 
occasion  tlierefor.  Every  niercliMiit,  I'lviov  or  re- 
tailer,  wliosoevei",  .shall  l)e  liable  lo  an  acrion  wlieii 
he  sludl  knowingly  liave  exi)()sed  I'oi'  sale,  or  pnt  in 
circnlation  objects  marked  witli  lictitioiis  or  altered 
names. 

Article 'Jnd.  In  conseqnence  hereof  tlie  infrac- 
tion above  mentioned  siinll  cease,  notwithstanding' 
Art.  17,  of  the  law  of  April  1:2,  18():i  (22  (reindnal 
year  XI),  to  be  comprised  in  tin?  infringetnent  of 
private  marks,  provided  for  by  articles  142  and  143 
of  the  Penal  Code. 


LAW  OP  JUNE  23,  1857,  ON  TRADEMARKS. 
7'llle  I.     Rigid  of  Property  in  MarJcs. 

Art.  1.  The  mark  of  mannfactnre  or  of  commerce 
is  oj)tional.  However,  decrees  rendered  in  the  form 
of  rnles  of  pnblic  administration  inay  always  make 
it,  in  particnlar  cases,  obligatory  for  the  i)rodncts 
which  they  specify.  Are  considered  as  mai'ks 
of  mannfactni'e  and  of  commerce  ;  names  nnder 
a  distinctive  form,  "titles,"  emblems,  imprints, 
stamps,  seals,  vignettes,  reliefs,  letters,  nnmerals, 
wi'appers  and  every  other  sign  serving  to  dis- 
tingnish  the  products  of  a  mannfactory  or  tlie 
objects  of  trade. 

Art.  2.  No  one  can  claim  exclnsive  (nvnership 
in  a  trademark  unless  he  has  dei)osited  two  copies 
of  the  trademark  at  the  Registry  of  the  Tribunal  of 
Commerce  of  his  domicile. 


B.-^S 


;589 


Frexcii  Statutes. 


i 

I: 


Art.  3.  Tlie  deposit  has  ofTect  for  only  fifteen 
years. 

The  ownership  of  the  mark  can  always  be  pre- 
served for  a  n(nv  term  of  fifteen  years  by  means  of 
a  new  deposit. 

Art.  4.     (Fees.) 

Tille  TL     DhpofilUons  Relative  to  Foreigners, 

Art.  5.  Foreigners  who  possess  in  France  es- 
tablishments of  industry  or  of  commerce  enjoy,  for 
the  products  of  their  establishments,  the  benefit  of 
the  present  law,  on  fulfilling  the  formalities  that 
it  prescribes. 

Art.  G.  Foreigners  and  French  citizens  whose 
establishments  are  situated  outside  of  France  have 
also  the  benefit  of  this  law  for  the  product  of  their 
establishments,  if,  in  the  (countries  where  they  are 
situated,  treaties  have  established  reciprocity  for 
French  mai'ks.  In  this  case  the  deposit  of  foreign 
marks  takes  place  at  the  Registry  of  the  Tribnm.1 
of  Commerce  of  the  department  of  the  Seine. 


Tittle  III.     Penalties. 

Art.  7.  Are  punished  by  a  fine,  of  from  fifty 
francs  to  three  thousand  francs,  and  by  an  im- 
prisonment of  from  three  months  to  three  years,  or 
by  one  of  these  punishments  : 

1st.  Those  who  have  counterfeited  a  mark,  or 
used  a  counterfeit  mark. 

:2nd.  Those  who  have  fraudulently  placed  on 
their  i)rf)ducts,  or  the  objects  of  their  commerce,  a 
mark  belonging  to  another. 

3rd.     Those  wlio  have  knowingly  sold,  or  placed 


FRExni  Rtatfte?. 


383 


on  snip,  one  or  more  products  invented  with  a  ronii- 
ferft'it  mark  or  one  IVaudiilentlv  affixed. 

ft- 

Art.  S,  Are  piiiiislicd  by  a  line,  of  IVoni  fifty 
franes  to  two  tlioiisaiid  francs,  and  by  an  itnpi'is- 
omnent,  of  from  one  month  to  one  year,  or  l»y  one 
of  tliese  penalties: 

1st.  Those  who,  withont  connterfeitino:  a  mark, 
have  made  a  fraddnlent  imitation  of  it  proper  to 
deceive  the  hnyei',  or  have  made  nse  of  a  mark 
frandidently  imitated  ; 

2nd.  Those  who  have  made  nse  of  a  mark,  bear- 
inij;  indications  of  the  kind  to  deceive  the  ]nirchaser 
as  to  the  nature  of  the  prodnct ; 

3rd.  Those  who  liave  knoMlii^^ly  sold,  or  x>laeed 
on  sal(%  one  or  more  pi-odncts  invested  with  a  mark 
frandnlently  imitated,  or  bearini^  indications  of  a 
kind  to  deceive  the  bnyer  as  to  the  nature  of  the 
product. 

Art.  9.  Are  punished  by  a  fine,  of  from  fifty 
francs  to  one  thonsand  francs,  ;ind  by  an  imi)i'is- 
onment  of  frcmi  fifteen  days  to  six  months,  oi'  by 
one  of  these  ]ienalties  : 

1st.  Those  who  have  not  fixed  npon  their  pro- 
ducts a  mark  declaied  obligatory. 

2nd.  Those  who  have  sold,  or  placed  on  sale, 
one  or  more  products,  not  bearing  the  mark  de- 
clared obligatory  for  that  kind  of  products. 

8rd.  Those  who  liave  contravened  t!ie  provi- 
sions of  the  decrees  rendeied  in  execution  of  arti- 
cle first  of  the  present  law. 

xVrt.  10.  The  penalties  established  by  the  pres- 
ent law  cannot  be  cnmulated. 

The  greatest  penalty  is  alone  pi-ononnced  for 
all  the  acts  {interior  to  the  fii'st  jjrocess. 

Alt.  11.  (Penalties  may  be  doubled  in  case  of 
repetition  of  offense.) 


mv  '■ 


884 


PUKXCH    STATrrilS, 


Art.  12.  Arfirlc  1(5:3  of  tlie  Pciuil  Codt'  iii.'iy  ho 
applied  to  niisdfMHciMioi's  iindtM'  tlic  ])i'(*s(Mif    hnv. 

Art,   i;}.     (OnV'iKU'rs  iiiny  he  d('i)rived  of    the'" 
ri.!:^!its  to  ])articip;it«>  in  certMin  elections.  Tor  :i  te; 
of  less  than  ton  years.) 

The  coiii't  may  order  the  ]>ostinLij  of  rlu^  jiidn'ineiit 
in  places  that  it  determines,  and  its  insertion  in 
I'nll  or  by  extracts  in  the  ne\vs])apers  that  it  desin;- 
nates  ;  the  whole  at  the  expense  of  the  conde'inned. 

Art.  14.  The  confiscati(m  of  the  ])rod:icrs,  the 
mark  of  which  shall  be  found  to  be  contrary  to 
tlie  provisions  of  articles  7  and  8,  even  in  case  of 
ac(]uittal,  can  be  ordeivd  by  flie  conrt,  as  well  as  the 
instruments  and  utensils  which  s])i>cially  served  for 
the  commission  of  the  wi'onsj^.  The  court  may  order 
that  tlie  ('(mtiscated  ])roducts  be  delivered  to  th 
])r()priet(n'  of  the  mark  counterfeited  oi-  fraiK 
lently  ailixed,  or  imitated,  independently  of  anipiei 
damau'es,  if  there  iu'  occasion  therefor.  Tt  pre- 
scribes, in  every  case,  the  desti'uction  of  the  mark 
found  to  be  contrary  to  the  provisions  of  articles  7 
and  8. 

Alt.  IT).  (Imposition  of  obligatory  mark"'  must 
always  be  decreed.  The  court  may  decree  the  con- 
tiscation  of  the  products  in  case  of  condemnation 
for  same  offense  within  live  years.) 


Tiile  IV.     Jurisdiction. 


Art.  IG.  Civil  actions  relative  to  marks  are 
brought  before  the  civil  tribunals  and  judged  as 
summary  matteis. 

In  case  of  an  action  brought  criminally,  if  the 
defendant  raises  for  his  defense  questions  relative 
to    the    f^^vnershii)    of    the    mark,     the    tribunal 


Frexcii  Statutes. 


nso 


11  y  bfl 

hnv. 

the'" 


on  in 
tlesir?- 
miiod. 
s,  the 
\vy  to 
■ase  of 

ns  the 
-ed  for 
V  order 

to  tV 
rant 
ampit'i 

t     IH'H- 

'  ni;nk 
tides  7 


of  Police  CorrertioneUc   passes  jiidu^rneiit  on   tlie 
question. 

Articles  17 and  18.  (Ilegulato  proceed ini;s  before 
the  courts.) 

Title  V.     General  and  Transitory  Arranr/cments. 

Art.  10.  (Provides  tliat  all  foieiixii  ])rodu('ts 
bearinu;  the  mark  or  name  of  a  mannljM'fiirci'  resi- 
dent in  Fiance,  oi'  the  name,  or  tiie  i>lace  of  a  i*'rpn<'li 
factory,  shall  he  excluded  from  France,  oi- s(^iz<>d.) 

Article  20.  All  the  rc<^ulations  (»f  this  law  are 
applicable  to  wines,  eau-de-vie,  and  other  drinks, 
to  animals,  grains,  tlour,  and  generally  to  all  ngri- 
cultural  products. 

Articles  21,  22,  and  23.  (Provide  for  dei)osit  of 
trademarks:  that  kiw  sliall  talve  ell'c(^t  in  six 
months:  for  rules  of  deposit  and  puMication;  and 
that  this  law  shall  not  affect  pnnious  deposits.) 


T  must 
lie  con- 
mation 


IKS   are 
Iged  as 

if  the 

lehitive 
libunal 


LAW  OF  NOVEMBER  26,  1873. 

Relatioe  to  the  eatahlisliment  of  a  stamp,  or  spe- 
cial sign  designed  to  be  placed,  on  trade  marks. 

Art.  1.  Every  proprietor  of  a  mark  of  manu- 
facture or  of  commerce,  de]K)sited  in  conformity  to 
the  law  of  June  23,  1807,  is  entitled,  on  his 
written  demand,  to  have  placed  by  the  State, 
either  on  the  paper  label,  band  or  wiapi)ei-.  or  on 
the  metal  label  or  seal,  on  which  is  shown  his 
mark,  a  special  printed  or  impressed  stam[),  de- 
signed to  alHrm  the  authenticity  of  said  mark. 

85 


u 


It  ?i 

1 


13 


386 


French  Statutes. 


The  stamp  may  be  placed  on  a  mark  which  forms 
part  of  the  objects  themselves,  if  the  administra- 
tion considers  them  capable  of  rtceiving  it. 

(The  remainder  of  the  law  refers  to  details  of  its 
administration.) 


FRENCH    DECISIONS. 


§  1050.  Initials  of  proper  namps. — Rcquisiteft  of 
mark. — lleriiHtr>i. — Vignettes,  containing*  the lef ters 
G.  F.,  interlnced  with  the  letter  JN.  followed  l)y  a 
space  for  a  nuineial, — printed  by  a  copper  i)lare  on 
slips  of  paper, — were  i:>asted  by  ])()th  coni])lainaiit 
and  defendant  on  their  goods.  Tlie  ordy  diUVMence 
between  the  two  marks  was  the  letter  C,  phici^d 
by  defendant  so  as  to  ap])ear  to  foi-ni  part  of  the 
letter  F.  (complainant  had  re<;-istered  his  mark. 
Ildd.,  that  the  manufacturer  who  adopts  a  mark 
ought  to  arrange  it  so  that  it  cannot  lie  confounded 
with  that  of  another  manufacturer  who  has  alieady 
made  use  of  it.  This  is  applicalde  even  in  the  case 
of  simple  letters  of  the  alphabet,  initials  of  manu- 
facturer's name. 

2.  An  imprint  on  paper  attached  to  the  manufac- 
tured object,  may  be  a  trademark. 

3.  Property  in  a  mark  is  not  acquired  by  the 
formality  of  registry.  Registry  is  only  lequired 
as  a  condition  precedent  to  the  acti(m  for  infriiig(>- 
ment.  Gurrin  t\  Forest,  C.  de  Cass.,  'J8  ^[ay,  182'J, 
Journal  da  Palais,  1822,  380. 

§  1051.  Damages. — Damages  ought  to  be  calcu- 
lated according  to  the  loss  of  the  complaiiuuit,  and 
not  according  to  the  profits  that  the  ini'ringer  has 

[387] 


388 


French  Decisions. 


t 


been  able  to  make.  C.  de  Nancy,  20  March,  1827, 
Germain  ?).  Sevene,  Sirey,  150,  1,  8(5.5.  ITu.ard  M.  do. 
Fah.  p.  47. 

§  10r)2.  Ilcld^  on  the  contraiy,  that  the  infringers 
onght  t  )  restore  to  tlie  eomplainants,  wliose  ])rop- 
erty  they  luive  usurped,  all  tlu^  illegitinjate  b(»iielirs 
which  tli(\v  have  realized  hy  aid  of  tlieir  fraudulent 
practices  ;  that  they  also  ought  to  aeoount  for  thn 
prolits  which  they  have  deprived  romplninants  of, 
and  to  repair  the  wrong  wliieh  thev  have  cjiMsed  l)V 
the  depression  of  the  price  of  the  n»e]'(;handise 
mannf;ictured,  and  the  rise  of  the  price  of  the  r;nv 
material,  usual  and  almost  necessaiy  consequences 
of  an  unlawfid  rivalry  ;  they  onglit  also  to  indem- 
nify largely  com})lainants  for  all  they  havesnlfeied 
in  their  credit,  sacri1ic(^s  of  all  kinds  which  thev 
have  been  obliged  to  submit  to,  and  all  the  expenses 
which  they  have  been  obliged  to  sustain  to  protect 
their  rights.  On  these  conditions  only  can  the 
great  industries  which  honor  the  country,  and 
which  have  too  often  to  fight  against  the  culpable 
maneuvei's  of  infringers,  maintain  and  defend  them- 
selves. Tribouillet  i\  Monnier,  Tr.  CVmi.  de  la  Seine, 
8  Aug.  1857,  Ilaard  M.  de  Fah  p.  48.  See  Blanc 
de  la  Contrefa(;on,  ]).  G8:i. 

§10,5'?.  Name  as  mark.  —  Uxc  of  name  of  third 
party. — A.  Seignette  &  Pontier  had  been  for  a  l<mg 
time  iu  tlu^  export  brandy  trade  at  Kochelle,  whe!i 
a  new  export  house  was  formed  at  Siirgii'es(E  Seig 
nette  &  Co.),  which  stamped  its  <'aslvs  of  braudy  A. 
Seignette,  by  means  of  a  hot  irou,  iu  j)i'ecisely  ilif> 
same  style  as  the  old  house.  K.  S.  ^:  Co.  claimed 
that  they  were  authorized  by  Alex.  Seignette  of 
the  United  States,  a  bi-other  of  one  of  the  jKirtners, 
to  tise  his  name.     Use  of  the  mark  A.  Seignette,  or 


I. 

4-,. 


French  Decisioxs. 


389 


any  other  similar  innik  by  dt^fdudants  eiijoiiierl.  X 
commercial  liouse  can  demand  that  another  house 
in  the  same  trade  use  m  difToreni  mai-k  from  that 
whicli  it  lias  stamped  for  a  \ovj;  time  o:i  its  <'X[)ort«. 
Seiii-uette  r.  >>eJ<^netU\  0.  de  Poiliers,  12  July,  J8:}3, 
Joai'uaJ  (In  Palais^  18'};J,  (578. 

^  1().')4.  NmncraJ-'i.  —  lnfrUi.(io.:n<'nL — OhajHjc  of 
inarJc  ordered. — The?  nKU-k  adopted  must  Ix;  so  dis- 
tinct from  the  marks  of  other  nninufactiuvM's.  Ihat 
it  cannot  be  confounded  with  tliem.  Wlien  a  man- 
ufactui'ei',  adding  numerals  to  his  name,  lias  us(^d 
for  a  long  time  the  mark  Diiuiu^  :3'2,  another  mauii- 
facturei'  cannot,  by  adding  numerals  to  the  name  of 
liis  partner,  take  the  mark  DiinKta  V.\2.  There  is 
too  little  difference  between  thes(3  two  intirks,  to 
[trevent  their  being  ccmfounded.  In  conscipience, 
(lie  use  of  the  mark  Dniuas  l'}2,  was  enjoined. 

Tn  ease  of  nnintenti(»ird  resemblance  between 
t  vo  marks,  the  c(Mirt,  alth!)!igli  denying  any  dasn- 
ages  for  infringement,  sliould  always  order  tliesuji- 
I)i'e-vsion  or  change  of  the  marks  to  ])revent  future 
confusion.  Dumas  r.  IJernard  and  Dumas,  V,.  lie 
Hiom,  18  February,  18:M,  Jintrii'd  dn  Piltis, 
18:34,  178. 

ii  lOo,').  Generic  lenn.  The  word  ink  is  \  generic 
term,  wliich  everyone  may  make  use  of,  but  no  (me 
but  the  lirst  possessoi*  can  usi;  the  words,  encre  de 
la  petite  virtu,  {^htk  of  ike  lillle  rlrtiie.)  Laren- 
audiere  i).  Perine-Lruyot,  C.  de  Paris,  July  24,  18:]r>, 
Ifnard  M.  de  Fab.  p.  1."). 

i^  lO.VJ.  ^tar.  A  star,  printed  u[)oa  a  coloretl 
cai'.',  without  initial  lettei's  indicative  of  the  name 
of  the  mamiiacturer,  or  of  the  jtlace  of  manufacture, 
is  a  good  trademai'k.  Lelaige  ^?.  Brossom,  C.  de 
Rouen,  530  Nov.  1840,  Jovrmd  dit  Palais,  1840. 


i!     i 


390 


French  Decisions. 


If  :« 


I 


§  1057.  Geograpl deal  name. — A  manufacturer  of 
lime,  wlio  without  beiniu;  the  exclusive  proprietor  of 
the  quarry  from  wliich  the  rougli  uuiterial  is  taken, 
cally  his  products  by  the  name  of  tlie  district  wliere 
the  (piariy  is  situated,  cannot  hinder  anothei-  \\\'x.\- 
ufacturer  of  lime,  who  uses  the  same  (piarj-y,  rr;)i:i 
^ivin/j,"  his  pioducts  the  same  name.  De  Lahnj  .-. 
Grig'uon,  C.  de  Cass,  24  February,  1840,  Juiwivd  dn 
PalaiH,  1840. 

§  10,")8.  Name. — The  merchant  wlio  sells,  as  com- 
ing from  one  manufacturer,  produ(!<s  of  anothei- 
manufacturer,  and  who  uses  on  his  goods  and 
labels  the  name  of  the  lirst,  renders  himself  liable 
in  damages  to  him  whose  name  he  has  usurped. 
The  mark  used  was  i^dtln.  Bonjean.  This  was 
applied  to  cloth  for  pantaloons,  and  was  clainic;! 
by  defendants  to  have  become  generic.  ]'>onjean  ^vas 
the  original  manufacturer,  the  plaintilfs  his  succes- 
sors and  proprietors  of  the  name  under  Law  of 
1824.  Iloyer  c.  Birtiche,  C.  de  Paris,  i;3  March, 
1841,  Journal  da  Palais,  1841. 

Koie.  Nevertheless  there  are  objects  to  which 
general  usage  has  given  a  name,  e.  (/..,  himps  of  the 
kind  called  Careel,  whi(;h  are  all  calknl  Carcel,  al- 
though they  are  not  made  at  the  factory  of  Carcel, 
or  his  successors. 

§  10.")D.  It  is  not  necessary  that  the  eml)leais 
adopted  as  trademarks  be  new  ;  it  is  necessary  and 
it  is  sufficient  that  their  ai)plication  be  new.  llol) 
ertson  v.  Langlois,  Tr.  CVmmi.  de  la  Seine,  '.'A 
March,  1841, 1/ttard  M.  de  Fab.  p.  12.  Id.  Sevin  /-. 
Provost,  Tr.  C(mim.  de  la  Seine,  14  Octobei',  1847. 
Hnard  M.  de  Fab.  12. 

J?  1000.  One  s  own  name. — Whenever  the  mark 
IS  made  up  of  the  name  of  the  person  who  uses 


FiiENCii  Decisions. 


391 


it,  others,  who  have  the  same  name,  have  an  equal 
right  to  use  it; and  one  cannot  forbid  its  use  by  the 
otlier.  Mounier  v.  Jobit,  C.  de  Bordeaux,  2^  June, 
1841,  Journal  dit  Palais^  1841. 

§  lOGl,  Descriptive  name. — The  phrase  "  sic- 
catif  brillant""'  (brilliant  dryer)  although  indicating 
a  fact,  is  nevertheless  not  a  necessary  title  to  tiie 
product,  and  is  a  good  mark.  Aff.  Raphanel  Tr. 
de  Comm.  de  Paris,  5  October,  184:J,  Uaz.  des  Trio. 
lluard  M.  de  Fab.  p.  lo. 

^  10G2.  Rigid  lines,  not  a  trademark.  IJiglit 
lines  running  parallel  upon  the  surface  of  a  cake 
of  soap  do  not  constitute  a  commorcial  designation 
worthy  of  the  protection  of  the  court.  Diusilly 
V.  Droux,  Tr.  de  la  Seine,  28  February,  1844,  llaard 
M.  de  Fab.  ^.  19. 

§  ]()G3.  Form  of  product.  The  form  given  to  a 
product, — e.  //.,  the  form  of  a  pipe, — is  not  analo- 
gous to  a  mark  of  manufacture.  It  is  only  a  simple 
designation  of  merchandise  protected  by  article 
1382  of  the  Code  Napoleon.  Fiolet  r.  Duval,  Tr. 
de  Morlaix,  25  March,  1844,  Iluard  M.  de  Fab. 
p.  19. 

§  1064.  Hidden  mark.  The  device  which  man- 
ufacturers of  champagne  X)lace  on  the  part  of  the 
cork  inserted  in  the  bottle  is  a  trademark.  A 
court  cannot  refuse  to  grant  an  iujunction  against 
the  infringement  (jf  such  a  mark,  because,  ])eing 
placed  in  the  interior  of  the  bottle,  it  is  not  appar- 
ent, and  could  not  therefore  serve  to  deceive  pur- 
chasers. Min.  Pub.  r.  Bernard,  C.  de  ('ass,  12 
July,  1845,  Journal  du  Palais,  1845,  ]).  (555. 

§  10G5.  Limitation  of  action s  for  in^'rinr/cment. 
Infringement  of  a  mark,  or  of  a  name,  cannot  bo 
legalized  by  the  longest  use.    The  proprietor  of  a 


■  i'     ft- 


^SppSSP 


PV 


i-« 


;ja2 


Fkejvcii  Decisions. 


6 
M 


name  or  a  mark  is  always  at  liberty  to  hrin/;-  lii;j 
suit,  wlion,  and  against  whom  he  pleases.  24 
July,  1840,  Tr.  d' Amiens,  Kooult  i\  Andicy 
(Vinaigre  d' Orleans),  Id.  531  December,  1852,  C.  de 
Gnnoble,  Gamni  «.  llivorri  (Liqueur  dii  la  Grande 
Chartrum),  I/l.  2  Aug'ust,  18j4,  C.  du  Paris,  Chre- 
tien v.  Bal mount  ( Vai  du  Sunel  Tr.)  Iltiard  Marq^ie 
de  Fah.  Tr.  p.  8:n. 

§  1000.  Wrapper,  imitation.,  damage  a. — By  the 
court.  ^  *  As  the  suit  is  brought  by  the  appel- 
lant for  the  fraudulent  imitation  by  Boudin  of 
the  envelopes  which  contain  the  ])roduct  placed  on 
sale ;  '•■  '^  as  the  insi)ection,  only  of  the  seized 
packages  and  their  comparison  with  those  placed 
on  sale  by  the  appellant  sufTices  to  demonstrate  that 
by  the  yellow  color  of  the  lirst  wrapj)er,  by  the 
rose  color,  and  by  the  ornaments  and  medals  of  the 
prospe(!tus  annexed,  and  by  the  gieen  color  of  the 
band,  in  a  word,  by  the  care  used  in  the  whole  dis- 
p;)siti()n  of  the  packages  m-inul'ac!:ured  and  sold 
by  Boudin,  to  give  them  a  resemblance  to  those 
made  by  Lecoq  and  Bargoin,  Boudin  has  attempted 
to  facilitate  a  confusion  between  the  two,  &c.  Judg- 
ment for  plaintitfs,  damages.  (Under  C  C.  ^  1382). 
Lecoq  and  Bargoin  o.  Boudin,  C.  de  Lyon,  15 
Jan.  1851,  Journal  da  Palais,  1851],  vol.  2,  p.  'M)S. 

§  1()G7.  <SV?rtZ  on  bottle  cork,  color  of  war,,  bottle. — 
A  vendor  of  mineral  water  cannot  close  his  bottles 
with  a  seal  like  that  already  adopted  by  a  lival. 
In  this  case  he  was  enjoined  not  only  from  using 
the  seal,  but  also  the  same  colored  wax.  The  court 
refused  an  order  for  a  change  in  the  peculiar  form 
of  bottle,  since  that  was  in  general  use.  Andre  «. 
Budoit,  C.  de  Lyon,  August  21,  1851,  Journal  du 
Palais,  1851,  2,  043. 


t 


French  Decisioxs. 


393 


§  IOCS.  Namliiff  an  iuvciitlon. — Gazor/cne.—In- 
fringement.  The  name  given  by  a  iiuuiui'actiirer 
to  an  ai)paTatas  of  his  invention,  belongs  to  liini 
as  a  mark  of  liis  goods,  and  tlie  sign  of  liis  ti'ad(?, 
so  that  no  Otlier  can  employ  the  same  title  to 
distinguish  like  i)i'oduets.  The  word  f/azo'/cnc 
belongs  to  the  one  who  lirst  ai)[ilied  it  to  an 
ai)[)aratns  f(jr  instantly  making  scllzer  loatcr,  al- 
though this  name  was  tdready  employed  to  desig- 
nate an  apparatus  for  i)rodu('ing  illniniiiating  gas. 
In  efl'eet  it  is  not  a  generic  nanus  when  it  is  applied 
to  an  a[)paratus  having  a  dih'ei-ent  use.  lti<die  r. 
13riet,  C.  do  Paris,  19  .Tauuary,  18r>2,  Joanial  dn 
Palais,  1852,  1,  190. 

^  1009.  Form.  To  the  lirst  user  belongs 
the  special  form  given  to  a  ])i'odn(Tt,  if  the  form  is 
not  reipiii'ed  by  the  natur(>  of  the  object.  Aubi- 
neau  r.  Gillemont,  Tr.  Comiii.  d(^  la  Heine,  17 
Feb.  18i"52,  Ilifard  V.  dc  Fah.  18.     See  -<  1078. 

vj  1070.  Marks  not  aUachnl. — [nfrhtf/cuiciU. — 
There  is  no  infringemiMit  when  the  marks  have? 
been  made  separate  from  the  goods,  and  never 
l)laced  thereon.  Alf.  Barbeh-,  C.  de  Paris,  18 
Febuary,  1852,  Dalloz,  1832,  1,  2ji). 

^  1071.  Eaude  Botot. — Na/me  in.  conunoii  vsc— 
Form  of  hollies. — Infrinf/ciiicitL—WXumw  lic]uid 
kiiov.-n  by  the  name  of  its  inventor,  has  (>ntered  in!o 
common  use,  the  impression  of  its  title  on  thc^  body 
of  the  bottles  intended  to  coiitain  it.  i:i  not  a  mark 
of  manufacture  susceptible  of  exclusive  property. 

Impressing  a  mark  on  empty  bottl(>s  does  not  con- 
stitute a  punisluible  act.  Barbiei-  v.  Bouman,  C.  d(^ 
Cass,  9  July,  1852,  Journal  d;ii Palais,  1C52,  1,  413. "• 


I 


*  Changed  by  law  of  1837.     Sec  §  llHo. 


r;i 


394 


French  Decisions. 


§  1072.  Vignette.— Puhlic  tmildhif/s.— The  vig- 
nette adopted  by  a  maniil'acturer  to  distinguish 
his  piodiictions,  and  wliioli  lie  places  upon  the 
boxes  and  wrappers  in  which  they  are  shii)ped, 
constitutes  his  trademark,  even  though  the  vignette 
represents  a  public  establishment  belonging  to  the 
State,  which  had  previously  been  placed  on  a 
scientilic  i)ublication.  (A  work  of  art  distinguished 
I'rom  a  mere  print  used  to  designate  a  certain 
thing.)  Ben  v.  Larband,  C.  de  Riom,  23  Nov.  1852, 
Journal  da  Palais^  1853,  1,  244. 

§  1073.  Generiename. —  Viaeifard proprietors. — 
The  use  by  a  merchant  in  his  marks  and  labels  of  a 
generic;  name,  previously  used  by  another,  does 
not  render  him  liable  to  a  suit  for  damages  by  the 
latter,  especially  if  he  has  introduced  in  his  name 
and  the  vignettes  accomi)anying  it,  such  changes  as 
to  avoid  all  confusion. 

Bv  THE  CouKT.  As  the  plaintiffs  have  not  chosen 
for  the  essential  features  of  their  mark,  a  proper 
name  susceptible  by  itself  of  being  property  ;  as 
they  have  not  adopted  a  fancy  name,  which  by  a 
species  of  lirst  occupation  thoy  had  a  right  to  claim 
as  their  exclusive  property  ;  as  the  title  under 
which  they  export  their  producit — Lcs  ^:>ro/?r/V- 
taircs  de  xir/noules^  in  English,  Vineyard  'propri- 
etors., is  a  generic  term,  belonging  to  an  indelinite 
number  of  i)roprietors ;  as  the  term  is  similar  to  a 
name  belonging  to  several  persons,  of  which  the 
law  has  never  enjoined  the  use  by  the  owner,  even 
though  a  person  of  the  same  name  has  adopted  it 
for  a  mark  of  his  products,  '^  *  Judgment  for 
defendant,  &c. 

Salignac  &  Co.,  had  obtained  an  injunction  in 
England.     They  were  required  by  this  judgment  to 


II  t 


French  Di:cisioxs. 


30n 


have  it  dissolved.  S:iligna(;  v.  Savanior,  C.  de  Bor- 
deaux,  19  Apiil,  185-},  Journal  da  P((Iais,  18.')4,  1, 
p.  120. 

§  1074.  Generic  name. — An  pelit  pot. — Altliouuli 
a  product  lia.s  been  sold  I'roni  time  inimciuorial  in  a 
little  pot  {^un  j)ctU  pot),  the  words  "at  tli(;  little 
pot"  (ail  i)etit  pot),  do  not  constitntt?  on  that  iic- 
count  a  generic  name,  and  the  one  who  lirst 
adopted  it  has  an  incontestable  right  to  the  <'x- 
clusive  nse.  RnfTy  «.  Gerard,  Trib.  dc  Coaiin.  de  la 
Seine,  8  February,  1854,  Haard  Marque  de  Fab. 
15. 

5^  1075.  Title  of  inoe)rtor. — Xo  one  but  the  true 
inventor  has  the  right  to  desci-ibe  hiniself  as  the  in- 
ventor of  a  patented  article,  even  though  the 
])atent  shall  have  expired  and  fallen  iulo  public 
use.  Therefore  the  patentee, — and  after  his  decc;ise 
his  son  as  heir, — has  an  action  to  pi-evcnt  such 
usui'pation,  and  for  damages.  ( Defendant  falsely  de- 
scribed himself  as  "  Inventor  of  ai)p'iratus  called 
distillatory  kitchens,")  Peyre  Sons  i\  Ilocher, 
C.  de  Rennes,  12  March,  1855,  1  Ann.  da  la  Pro. 
183. 

§  1076.  Fancy  name. — Label  of  cliampagne 
'wines.  Thomas  used  for  two  years  a  label  on 
champagne  sold  by  him  containiug  the  words, 
"Marquis  de  Lornie,  Sillery  niousseux,"  a  fan(!y 
name.  Lcu'vie  used  same  Avords  on  chnm])ngne,  con- 
tending on  trial  that  they  were  iictitious,  and  indi- 
cated neither  the  maker,  or  i)lnce  of  manufnctuie, 
and  no  rights  i)assed  to  the  i)lainti(T.  It  does  not 
appear  that  remainder  of  label  was  imitated. 

Held,  that  although  the  use  of  an  anonymous 
name  as  above  might  lead  to  abuses,  yet  rivals  in 
business  could  not  take  the  mark  of  a  merchant  or 


890 


FiiENCii  Decisions. 


1 1 


^■M 


■      '1:-: 


manufacturer,  and  (L.'privo  liiin  of  his  customers  by 
a  confusion  impossibhi  to  bo  avoided.  Decree  for 
injunction,  destruction  of  mark  on  boxes  and  bot- 
tles of  wine  belon.u;in;'^  to  deiVMuUint,  and  damages. 
C.  do  I'aris,  T)  November,  1850,  Thomas  v.  Lovie,  1 
Ann.  de  la  Pro.  222. 

§  1077.  Iiifrin(/cnient  of  name.  — Acf/uiesccnce. — 
InUia/.s\ — Fdron  de. — The  name  of  a  manufacturer 
or  merchant  is  i)roperty  ;  tlierefoie  a  manulacturer 
cannot  use  on  his  wrappers  and  l)ills  the  name 
of  another  manufacturer,  even  by  putting  before 
it  the  woi'd  f((ron  (styk;),  unless  it  is  pi-oved  that 
by  long  usage  and  l)y  the  tacit  or  express  consent 
of  the  intei'ested  i»erson,  the  name  has  become  tlu^ 
usual  title  of  tlie  article,  serving  to  indicate  in 
commerce  a  certain  kind  of  manufacture.  If  iji  the 
lattercase,  it  is  exceptionally  permitted  to  thostuiot 
owneis  of  the  name  to  use  it,  it  is  on  the  condition 
that  it  be  used  in  a  manner  avoiding  confusion  be- 
tween the  products  of  different  manuiactnrers. 

2.  A  manufacturer  may  take  for  Ids  trademark  the 
initial  hitters  of  his  name  ;  but  in  that  case  he  can- 
not stop  the  use  of  the  same  letters  in  a  dilferent 
order.  Thus  tlie  manufactui'er  who  lins  taken  for 
his  trademark  S.  T.  cannot  object  to  another  using 
the  letters  T.  S.,  although  theie  results  an  easy 
confusion  between  the  two  establishments.  13ri- 
card  V.  Teissier,  C.  de  Cass,  24  Dec.  18rx"),  2  Ann. 
de  la  Pro.  18. 

^^  1078.  ErnJ)leins. — Form  of  j) rod. net. — lufrhige- 
■iiwnt. — Plaintiifs  weremanufactuiers  of  solid  laun- 
dry bluing  in  cakes  in  the  form  of  sad-irons,  with 
the  raised  iigures  of  vromen  on  one  side  in  the  act 
of  ironing,  and  on  the  otliei',  of  washing  or  i)lacing 
clothes  on  lines  to  dry.     Regular  deposit  was  made 


h'' 


French  Decisioxs. 


397 


of  their  mark.  Defendants  mado  tlioir  bluiiii;  also 
in  the  form  of  snd-irons  witli  the  ilLjure  of  a  woman 
on  one  side  in  tlie  act  of  wasliinu'  oi-  jionin::?. 

IlelcK  in  the  k)wer('onrt,  lliat  fsinc.' tliere  was  only 
a  resemhiiince  in  form,  and  in  the  Jhjiires  lietwe»Mi 
the  two  i)i'odu('ts,  and  it  w:is  not  easy  for  any  one 
to  be  (hu'eived,  heeanse  (Mich  hore  the  \\:\\w\  oF  llie 
mannuiotnrer,  and  the  boxes  wliich  cnclosrd  thn 
cakes  were  not  alike  in  color  or  iiisciipMon,  and 
there  Avas  I'ather  a  rescMnblance  than  servile  imita- 
tion, plaintilfs  had  no  right  of  action.  On  nppoMl 
judgment  was  reversed,  it  being  held  that  dd'cnd- 
ants  had  infringed  the  marks  and  einl)lems  :ido])r;>d 
})y  ])Iahitilfs  ;  that  the  circumstance  that  Ihe  bluing 
of  delVndants  bore  his  name  was  unim])ortant,  as 
the  difference  in  name  did  not  justily  the  usuipa- 
tion  of  a  mark  which  most  generally  guid(>s  the 
l)urchaser.  Damages.  Boilley  i\  Jollivet,  C  de 
Lyon,  14  May,  JH.")?,  3  Ann.  (hi  la  Pro.  •jr):)."' 

§  1079.  French  citizen  and  forcif/ner. —  fn- 
frinr/einent  of  iradeinark. — The  l-'rench  coni-ts 
liave  jnrisdicti<m  of  an  action  foi*  unlawful  i  iv;dry 
bronglit  by  a  French  citizen  against  a  sti'anger, 
even  tliough  the  act  took  place  in  a  foreign  c()un- 
try.  Bloc  v.  Ilinks-AVils,  C  de  Paris,  25  Jan. 
isnc,  2  linn,  de  la  Pro.  57. 


*  Tlie  Frenoli  editor  in  a  note  says,  that  the  court  apponrs 
to  have  decided  tli;it  a  special  form  I'l'  a  product  could  l)ccoiue 
a  trademark.  Tint  lie  tliinks  the  iinitatinn  of  the  form  of  a  pro- 
duct is  only  an  nnhiwful  rivah-y  in  trade  (under  C  (,'.  lllS'i),  and 
the  .same  cannot  be  a  trademark.  Held,  that  the  s(piare  form  of 
u  bottle  wan  not  an  invention  of  the  ])laiutiir,  and  by  itself  did 
not  constitute  a  trademark,  .serving  to  designate  the  origin  and 
identity  of  his  [jroduct.  Tissier  r.  Lecanipion,  C.  de  Pari.s,  8 
Nov,  1855,   1  Ann.  de  la  Pro.  100. 


398 


French  Decisions. 


I 


§  1080.  A^/f/n.s.  —  [Jnhfir/td  rimJr//. — FlHiclous 
partiwrshlj). — ^^<liso^^  dc.  Id  Jftr<'  Morranx. — Atr. 
iind  Mrs,  Moroaiix  cairietl  on  a  liquor  stoiv  at  pljice 
(le  IKcOIc  No.  4,  Paris,  known  as  Moisaii  Mon'dux 
or  J/f//.sv>y/  <l<'  J  a  }U,('  Morctdt.v^  I'roni  I8>!3  to  184tJ, 
when  flicy  sold  ir  to  Mr.  and  Mrs.  Le-sare.  In 
18,VJ,  Mr.  liossure  died,  and  some  time  alteiwards 
liis  widow  (the  establishment  having  been  managed 
by  her  brother)  sohl  it  to  llobineaii,  the  phiiniilF. 
The  ))rother  i'onned  a  i)ai-tn(U-shi[)  with  Diiiiot.  iiis 
eo-defendant,  givin  >;  to  it  his  trade  of  "  rK|iioris!e.*" 
Shortly  after,  they  put  on  their  shoi)  front,  and  on 
their  labels  and  mannfaetnres,  ''  Morcdu.r,  Jll.s  fie 
Id.  Mere  Morcdn.v,  d  Dnrlof."  The  Tj-ibimal  of 
Conmiei-ee  held  Moreanx  had  :i  i-ight  to  use  his 
own  name,  but  not  to  add  it  t(»  anything  to  h'ssen 
the  rights  of  Hobinean,  and  directed  the  words 
•'de  la  Mere  Moreanx"  to  be  erased  from  defend- 
ants' signs,  &c. 

On  appeal  by  Robinean  it  was  contended  for 
him  that  the  partnership  of  Dnriot  &  ^SToreanx  iils 
was  iictitious.  By  defembints,  that  there  was  no 
frand  ;  that  Moreanx  Iils  had  been  engaged  all 
his  life  in  the  manufacture  of  liquors,  and  had 
only  used  his  right,  in  associating  liimself  with 
Dnriot,  to  bring  to  the  j^artnership  his  name  and 
trade.  He  had  no  part  in  the  sale  to  ]lobin('!ii. 
and  was  not  personally  bound  by  any  giiarnn*  to 
him.     Held,  that  when  a  person  bearin  name 

of   a  commercial  house  associates  jiim  with  a 

rival  house,  and  it  appears  from  the  circiiin-tai'  I's 
of  the  case,  and  espechilly  from  the  stipulation.s  of 
the  agreement,  that  tlie  partnership  is  only  a 
fraudulent  means  invented  with  a  view  to  establish 


FRENon  Dkcfsioxs. 


;wn 


a  confusion  between  the  two  houses,  tlie  eouit  can 
order  the  suppression  of  Ihe  name  of  fh«'  pretended 
partner,  althougli,  l)ein.i;*  sf)n  of  tlie  founder  of  Ihe 
lirst  house,  h(i  had  iM^i'sonally  contiiuicd  in  the 
exercise  of  tlie  sauK^  kind  of  industry.  Robincau 
V.  Duriot,  C.  de  Paris,  5?8  ,Jan.  18.")0,  2  .1  //,.  (/c  ht 
Pro.  54. 

§  1081.  Firm  name. — Sinillnril >/  of  iiaiiws 
and  illJe. — (Jotwurrcrice  delot/ale. —  ..  luMe  a  part- 
nersliip  lias  introduced  into  its  firm  name,  even  in 
tlie  second  place,  the  name  of  another  i)artnershi|), 
— c.  //.,  Richer  et  Oie.,  in  Iluf^uin,  Riciier  et  C'le., 
and  the  addition  was  made  with  the  end  of  mak- 
ing a  ('(HLCurrence  (lelot/al  (unlawful  rivalry),  tho 
courts  may  order  the  suppression  of  the  name  of 
the  partner  which  causes  confusion  between  the 
two  iirms.  (Richer  was  taken  into  the  business 
that  his  name  mii^ht  be  nsed.) 

2.  The  inventor  who  has  sold  to  an  associate  the 
X)roperty  and  exclusive  use  of  patented  apparatus 
to  which  he  has  given  his  name  can  afteiwards 
neither  use  the  same  appai'atus  nor  give  anew  his 
name  to  apparatus,  even  different,  which  he  uses 
in  the  same  trade.  Richer  &  (Jo.  r.  lluguin,  llicher 
&  Co.,  Trib.  de  Comm,  de  la  Seine,  5  ^iar.  ISHG,  2 
Ann.  de  la  Pro.  120. 

§  1082,  Infringement  of  name  and  trademarJc. 
— Foreigners. — A  stranger  not  domiciled  in  France 
has  no  right  of  action  to  enjoin  the  use  of  his  name 
or  trademark. 

But  a  Frenchman  Avho  proves  himself  the  owner 
of  a  name  and  trademark,  legally  registered  in 
France,  has  an  action  to  enjoin  not  only  the  use 
of  such  name  and  trademark,  but  also  the  imita- 


m 


M 


11 '  1 


400 


Frettcit  Decisions. 


II: 


i^e^ 


tions  of  it  which  may  cause  confusion.'-  Farina  v. 
Camus,  Tiib.  do  Comm.  do  la  Seine,  24  Mar.  1850, 
2  Ann.  de  la  Pro.  ]o9. 

§  108;}.  Wnippcrs.—Like  fonn.,  ciKor  (ind  size. 
— PlaintiJf  sold  clicinical  paper  enclosed  in  a  ma- 
roon colored  ])asteboard  roll.  This  roll  had  been 
depositiHl  with  the  Kegister  of  the  Tribunal  of 
(Jonunerce.  Defendants  put  up  and  sold  the 
same  i)aper  in  jvn-^teboai'd  rolls  of  (he  same  form, 
size,  and  color.  Held,  that  Ihese  circumstances 
w<M('  sullicient  to  cause  a  confusion  between  the 
goods  of  the  two  parties.  Au  injunction  was 
granted.  Damages.  I'oupier  v.  Lauren(;on,  Trib. 
de  Comm.  de  la  Seine,  4  Apl.  ISoO,  2  Aiin.  de  la 
Pro.  :]();}.     See  ^^  108,"). 

5^  1084.  Aiinoiuwemenl  as  '^successor.'" — The 
l)ui'chaser  of  th<^  stock  and  good  will  of  ii  lirm,  of 
whicli  he  was  a  member,  has  a  right  to  announce 
himself  under  the  name  of  the  former  lirm,  adding 
that  he  is  successor.  Dietry  n.  Marcel,  C  de  Paris, 
28  June,  18.)G,  2  Aurt.  de  la  Pro.  252. 

«^  108,").  Wrappers.Sin/llariti/  of  form.,  color, 
&c. — C,  a  biscuit  manufacturer,  deposits  1  according 
to  law,  four  packages  of  biscuit,  wi-apped  in  white 
l)aper,  "glace,'"  with  a  label,  "At  the  Biscuits  of 
the  Crown,'"  printed  in  gold,  and  designs  of  medals  at 
each  corner,  tlie  French  arms  in  the  center,  and  at 
the  two  ends  an  escutcheon  with  the  words  "a  la 
vanille"'  (vanilla).  K.,  a  biscuit  manufacturer, 
also  wrapped  his  biscuits  in  white  pai)er,  "glace," 
with  a  label  printed  in  gold,  and  a  vignette  bearing 
medals  at  each  angle.     At  the  centei'  api)eared  the 


■(■ii 


*  By  treaty  Americans  now   liave  the  eame  right  of  action  in 
Franco  as  Frenchmen  have  in  America.  —  7Vmfy  of  1 809. 


Ii'  ■ii.i 


^w 


FiiKxcii  Dkcisfons. 


401 


The 

1,    ol' 


ans, 


olor, 
(ling 
vhite 
its  of 
x\s  at 
lid  at 
a  la 

lUl'Ol", 
lU'illi' 


lion  la 


French  nrms,  and  at  fhe  coi-ners  oscntoheons  witli 
ri»o  words  "  Ghiccs  a  la  vanillo." 

Held,  that  11.  had  made  the  \vrai)])<Ms  of  his  bis- 
cuits, as  well  in  form  as  in  color  and  dimensions, 
in  a  manner  to  establish  as  true  a  i'es(Miiblanc(;  as 
])()ssi])1e  with  the  wi'a])[)eis  of  (t.,  and  to  cause  con- 
fusion w  ith  the  products  of  that  hi)Us(\  and  .should 
he  enjoined.  Da  ma  <i'es  awarded,  (luillout  r.  Hichaid, 
C.  de  Paris,  10  Dec.  IS^C;,  )]  A/ut.  de  Id  Pro.  W.). 

%  lOSil.  Binalri/. — Employee  and  en/ploi/er. — .M. 
&  P..  photoirrapliers,  established  at  'So.  ?>  Ji.  de  Ca- 
pncins,  employed  II.  and  Y.  The  latter  afterwards 
established  themselves  at  No.  11  same  street,  with 
a  sign  reading  "llerlich,  A^ust  &  Co.  in  this  Inmse, 
ex-artists  of  the  house  Mayer  and  Pierson,  wjjeie 
they  had  the  honor  to  paint  the  [)hotogra])iiic  por- 
traits of  their  ;>rajesties'the  Hmperor  and  J^ini)r<}ss, 
as  well  as  of  the  principal  dignitaries  of  (he  C-rown, 
the  King  of  \Vurtemburg  and  of  Pojtugal,  Abd- 
el-Kader,  Arc.''  On  suit  brought,  II.  &  V.  volun- 
tarily omitted  the  words  "ex  artists  of  the  house 
Mayer  c\:  Pierson,''  retaining  the  reniaind<>i'.  They 
contended  that  the  ai-tist  added  by  painting,  to  the 
stifl'  photographs  i)reviously  taken,  and  that  I  h(\y 
had  performed  this  work  for  M.  &  P.  That  they 
had  a  right  to  sav  so,  because  thev  had  always  re- 
tained  possession  of  their  artistic  talent,  and  there- 
fore they  could  claim  the  authorship  of  the  ])()i'- 
I raits  which  they  had  painted  in  the  workshop  of 
their  old  en]])loyers. 

Held,  that  II.  &  V.  could  not  use  the  name  of  their 
old  employers.  Also  that  no  cinployei^  or  ai'tist 
woi'king  on  account  of  a  coninie:cial  house,  can 
claim  the  right  to  preserve  his  indivicbiality  in  the 
work  on  which  he  has  been  engaged.  Also,  that 
26 


.•<ii«l  i>   r—  -"■-••■'^ 


402 


Frexcii  Decisioxs. 


H.  &  V.  should  pay  damages  and  costs.  Mayer  v. 
Ilerlich,  Tiil).  de  Comm.  de  la  Seine,  2'S  Jan.  1857,  3 
An7L  de  la  Pro.  O.'j. 

§  1087.  Industrial  nanie.—D.  formed  a  com- 
pany with  title  ''' Oalsse  des  report'^.'"'  V.  &  C(j. 
adopted  s;ime  name  in  addition  to  their  own  name 
previously  used.  On  objection  being  m:ul(\  tliey 
changed  it  to  "  Ca/.v.9e  general  de  rcporU^'''  which 
couhl  mislead  the  public  into  l>elicving  tliat  I)'s 
place  was  but  a  branch  of  Vs.  IL'Jd^  that  there 
is  an  infringement  of  a  trade  name  wlien  that  which 
is  taken  by  the  rival  can  lead  to  confusion  between 
tlie  two  establishments,  although  one  may  not  be 
literally  the  reproduction  of  the  othev.  Damages 
not  withheld  when  change  has  been  tardily  made. 
D'lnville  w  Vergniolles,  C.  de  Paris,  C  Feby.  18.'57. 
W  \nu.  dela  Fro.  202. 

^  1088.  Fancy  name. — Paper  Job. — Jean  1  Par- 
don, amanufacturer  of  cigarette  paper,  mark(*d  tiieiu 
witli  his  initials  J.  B.,  which  he  separatt'd  i)y  a  loz- 
enge, so  tliat  the  mark  appeared  to  l)e  the  word 
"Job."'  The  public  called  for  Job  paper.  L.,  an- 
other manufacturer  of  cigarette  paper,  associated 
with  himself  one  Job  and  took  the  mark  "Jol)."' 
saying,  that  as  his  partner  was  named  Job,  he  had 
a  better  right  to  use  the  mark  tlian  13ai'dou,  who 
liad  only  acquired  it  by  the  error  of  the  public.  (B, 
had  previously  (1852)  brought  suit  against  L.  in  the 
police  court,  for  counterfeiting  his  trademark, 
and  obtained  judgment,  that  he  (B.)  was  entitled 
to  the  word  "Job,"  as  his  trademark.)  Held,  that 
L.  cS:  J.  should  be  restrained  from  using  the  word 
'•Jol)."  Damages.  Bardou  o.  Lassausee,  Trib.  de 
€omm.  de  la  Seine,  20  Feby.  1857,  3  Ann.  de  la 
Pro.  125. 


French  Decisions. 


403 


^  1080.  f^ifjn. — Rif/hts  of  fixccessors. — The  mer- 
chant wlio,  in  sellinu;  his  stock  in  trade,  gives  to 
the  buyer  the  right  to  use  liis  name  and  title  as  suc- 
cessor^ can  st(4>  the  puicliaser  from  using  on  liis 
sign,adveiHsements  and  manufactures,  his  (tlie  sel- 
ler's) name  alone,  without  adding  his  (the  pur- 
<'iiaser's)  own  name  and  his  position  as  successor. 
IJautain  t\  Mercklein,  U.  de  Paris,  "21  March,  J8o7, 
:{  Ann.  de  hi  Pro.  207. 

^  101)0.  LiJce  names, — Signs. —  Unlamfnl  ri- 
i'dlnj. — Pinaud  k  Amour  were  hatters  at  No.  87 
Jlue  Ridielipii,  under  style  Malson  Pinavd,  Ilene 
IMneau  afterward  established  himself  in  same  busi- 
ness at  No.  01,  under  title  Malson  Pinean.  He 
used  (m  tlie  lining  of  his  liats  a  servile  imitati<m  of 
the  escutcheon  of  P.  &  A.  and  everv  endeavor  to 
turn  to  his  jn-otit  their  trade. 

Held,  that  although  Pineau  had  the  right  to  use 
his  own  name  on  his  shop,  lie  shcmld  suppi'ess  the 
word  J/((iso/t  ,'  that  he  should  diange  the  escutcheon 
ou  the  lining  of  his  liats ;  that  lie  sliould  add  to  his 
name  Pineau  his  given  name  Kene  ;  and  that  these 
two  names  should  be  placed  on  his  shop,  liis  bill- 
heads and  commercial  letters  in  the  same  line  and 
like  characters.  Pinaud  yn  Pineau,  Trib.  de  Comni. 
de  la  Seine.  2S  May,  18.')7,  4  Ann.  de  hi  Pro.  80. 

;$  1091.  (reneric  name.  —  Toile  vienaye  {hon.se- 
liohl  clolh)  is  not  a  fancy  name  which  can  become 
the  i)roi)erty  of  a  single  manufacturer,  it  having 
been  used  for  many  years  by  vaiious  manufacturers 
of  Alsace.  Both  parties  embi'oidered  the  wf)rds 
t(tih'.  menof/e  in  red  letters  on  their  goods,  but  used 
other  marks  to  indicate  theii'  manufactui'e.  Held, 
no  infringement.  Rian  i\  l^ernheim,  C.  de  Colmar, 
10  June,  1857.  4  Ann.  de  la  Pro.  '2\(i. 


-^^'■w'wy iy*y*'^'  '   I 


40 


French  Becisions. 


I 

■p 


|i    ;>■ 


§  1092.  Business  signs. — Pharmacie  CentraU 
de  France. — Plaintiffs  were  proprietors  of  a 
pharmacy,  and  were  the  lirst  to  use  the  sign  Phcw- 
macie  Centrale  de  France.  Defendants  afterwards 
called  theirs  Pharmacie  Bat  ion  ale  Centrale  de 
France.  They  were  enjoined  the  use  of  the  wortls 
Centrale  de  France.  Damages.  Dorvault  v.  Ilure- 
aux,  Trib.  de  Comm.  de  la  Seine,  24  July,  18r)7,  ^ 
Ann.  de  la  Pro.  125. 

§  1098.  Labels.— Title  of  products  .—Cafe  des 
Go u rm rts.  — Tnfrinr/em ent.  — When  a  nia n uf actu ler 
has  adojited  for  his  products  a  special  title — as  Cafe 
des  Gourmets  (the  gourmand's  coffee) — and  legally 
deposited  his  labels,  another  who  imitates  not  only 
the 'shape  of  the  boxes  and  labels  of  the  first,  but 
also  uses  the. phrase  Aux  Vrais  Gourmets  (ti'ue 
gourmands),  instead  of  C(ffe  des  Gourmets.,  is 
guilty  of  unlawful  rivalry  and  should  be  enjoined 
and  adjudged  to  pay  damages.  Guerineau  v.  Ar- 
gant,  Trib.  Civ.  de  la  Seine,  13  Aug.  1857,  4  Ann. 
de  la  Pro.  155. 

§  1004.  l^tme  trademarlc  as  §  1093.— Defen- 
dants in  this  case  substituted  the  words  Cafe  des 
Connoisseurs  for  Cafe  des  Gourmets,  imitating, 
however,  the  arrangement  and  text  of  the  label  of 
the  plaintiff's,  excepting  the  name  and  place  of 
niannfncture.  The  same  was  printed  in  l)lue  in 
stead  of  black.  Held,  there  was  an  infringement 
of  tradcnuuk  under  law  of  1857.  Uiiorineau  v. 
Mignon,  Trib.  Corr.  de  la  Seine,  27  January,  ^^7)S, 
4  Ann.  de  la  Pro.  157. 

^  1095.  Labels. — Circulars. — London  Pispen- 
sari/. — The  use  on  circulars  and  labels  of  the  title 
London  Dispensary.,  and  Pharmacie  de  V  Anihas- 
sade  d'  Anyleterre  (Pharmacy  of  the  English  Em 


m 


FuKxcii  Di-xisiONS 


■VXi 


bnssy),  which  had  been  previously  used  by  an  En- 
^^iish  pharmaceutist  at  Paris,  is  an  act  of  unlawJ'ul 
rivalry  in  business,  and  subjects  the  oileiider  to  an 
action  for  damages  and  injunction  (Civii  Cod(\  ^ 
l'^S2).  Schortliose  v.  Hogg,  Tiib.  de  Comm.  de  hi 
Seine,  25  March,  18ij8,  4  Aim.  de  la  Pro.  t^-Jil 

§  1(M)().  Fiffure  of  looman  reprcfientiiiff  "  Pliar- 
■Diarij.'" — When  a  pharmaceutist  has  a(L)ptod  for 
his  products  a  hibel  sliowing  a  woman  representing 
Pharmacy,  having  one  hand  on  a  book,  as  a  symbol 
of  science,  and  in  the  other  a  caducous;  anotlier 
pharn)aceutist  is  liable  for  infringement  and  unlaw- 
ful rivalry  who  uses  a  label  on  which  he  reproduces 
the  same  figure  in  similar  frameworlv,  even  fli()i;gh 
he  usesdiiferentdetails,(t\  ,7.,  different  arrangement 
of  the  accessories  to  the  figure  of  the  woman,) and 
the  names  of  the  two  houses  be  given.  Dorvault 
V.  Teissier,  C  de  Paris,  28  April,  \'&:)d,^  4  Ah  11.  de 
la  Fro.  2!)8. 

^  1097.  A^'ame.s  and,  labels. — Form  of  hoUlr.s.— 
Although  the  manufacture  of  Veau,  de  Botol  (Botot 
watei')  has  become  public,  manufacturers  of  that 
wafer  are  not  allowed  to  use  the  same  foj'in  of  bot- 
tles and  seals  as  the  successors  of  P)Otot,  \\u\  oiigi- 
nal  ])roprietoi's  of  the  watei',  nor  to  sell  theij'  pro- 
ducts ns  (urilable  eait  de  Boiot  (pure  Botot  watei-). 
Barbier  v..  t^inion,  Trib.  de  Comm.  de  la  Seine,  8 
Ai)i'il,  A^":)^,  4  2\nn.  de  la  Pro.  191 ;  aflii'med  on 
a[)|)eal,  5  Id.  HOO. 

2.  To  same  ( effect,  case  on  Elixir  l^aspail.  Conibier- 
Destre  v.  Maller-Liiudas,  I'rib.  de  Comm,  de  la 
tSeine,  1H  August,  1857,  8  iVnn.  de  la  Pro.  :?.")1. 

^  K)98.  (ieneric  name. — Benzine  parfHine. — 
When  the  wi>rd  used  to  qualify  a  product  is  gen- 
eric, xvAi^f^rfumed  applied  to  benzine,  henzhie  pur- 


■  '••myf^'1  ii"«iff^'^ 


40G 


French  Di<:cisioisrs. 


M 


II  |i 


fume  (perfumed  benzine),  no  one  can  rlniin  exclu- 
sive proiKM'ty  in  such  word.  Tliil)iei<j;e  i\  Dupont, 
Trib.  de  Conim.  de  la  Seine,  0  August,  18r)8,  4  Ann. 
de  la  Pro.  400. 

g  loot),  GcograpJthal  Name. — Adniittin.ij;  \\\:\\ 
the  name  of  a  place  of  mnnufachiiv,  niider  law  of 
18i)7,  niaj^  bec(mie  a  tnideniark,  it  is  only  so  when 
it  is  used  in  a  special  form. 

2.  There  is  neither  infringeinent  of  a  trademark, 
nor  unlawful  rivaliy  in  puttini;-  on  tiles  the  woi'ds 
jKvs  Massy  (^Jiear  Massy ),aUhough  aiiothci- manufac- 
turer had  previously  adopted  as  a  ti-ademaik  the 
word  Mds'st/,  if  in  practice  the  title,  Carreaux  de 
Massy  (^tiles  of  Massy),  is  ai)plied  to  tiles  manufac- 
tured in  the  neighborliood,  as  well  as  in  Mas's//  it- 
self. l^isson-Aragon  i\  Aragon,  O.  de  Paris,  '.\ 
June,  IS.")!),  5  Ann.  de  la  Pro.  210 

^  1 100.  (h'iujraphk'al  ISamr. —  VaUce  d'  A  iire. -  - 
The  name  of  a  place  cannot  become  the  ])ropei'ty  of 
one  who  has  chosen  to  make  it  his  trademaik,  ex- 
cept when  the  place  itself  is  his  private  property. 
In  ccmsecpience  the  other  j)roducers  of  the  sanse 
country  may  use  the  same  name.  It  is  even  so  in 
case  the  title,  though  known  j)reviously,  had  ac- 
quired celebrity  in  connnerce,  by  th(^  use  of  Jiim 
who  introduced  it  into  his  mark.  Theie  is  no  un- 
lawful rivair\%  in  employing-  foi'  similar  protlucts, 
the  same  name  of  place,  and  receptacles  (d*  the  same 
form  and  size,  when  they  are  distinguished  by  the 
name  or  special  mark  of  the  makei-.  Neither  plain- 
tiffs   nor  defendants  did    business  in   tiie  vallev 

• 

{Aiirc),  whose  name  they  used,  but  placed  its  name 
on  butter  shipped  by  them  to  Brazil.  iNo  legard 
was  had  to  the  origin  of  the  l)utter.  Levigoureux 
V.  Lecomte,  Trib.  Civ.  de  Havre,  :]  June,  185*.),  5 


J. 


French  Decistons. 


407 


Ann.  de  la  Pro.  279.     Seo  also  Biii-ii  )\  Piiiet,  C. 
de  Grenoble,  11  Febriuiry,  1870,  10  Ann.  da  la  Pro. 

§  1101.  Piu  ndoniiriic. — The  aullmror  artist  who 
makes  liiaiscU'  kuowii  under  a  psiMKlouynio  becomes 
theo\vner  of  the  luiinc,  and  can  prevent  the  use  of  the 
same  by  another  in  trade,  should  he  liiuisclf  (Mi,u;a,ij,'e 
in  trade,  Tcmrnacdion  i\  Tourniichou,  C.  de  Cass,  0 
Jnne,  isno,  o  Ann.  dr  la  Pro.  :214. 

^  1102.  LabeU. — Labels  (•oni|»o>(Ml  and  sold  by 
a  lithographer  are  not  his  trad<'niarks.  They  can 
only  be  protected  as  artistic  designs  under  the  law 
in  1  elation  to  designs. 

By  'nil-:  Couirr. — The  trademark  rcguhited  l)y  tlie 
law  oi'  June  25,  18.")7,  is  the  characteristic  sign  by 
which  the  manufacturer  distinguidies  the  product 
of  his  factory,  or  the  niei'cliant,  th(^  objfM-t  of  his 
trade  ;  it  is  not  itself,  and  cannot  become,  a  [noduct 
of  manufacture  or  an  object  of  trade.  By  the  use 
that  a  merchant  may  muke  of  a  label  in  ap[)lying  it 
to  a  receptacle  containing  a  product  of  liis  nian- 
nfactnre,  it  is  possible  that  the  label  may  biM'ome 
for  him  a  trademailv.  It  will  be  for  him  a  distinc- 
tive sign  or  seal  of  his  product  without  l)ei!ig  the 
subject  of  his  trade  ;  whereas,  so  far  as  1  li<»  plaintills 
are  ccmcerned,  tliese  labels  can  never  he  othei-  than 
the  products  themselves  of  their  nianufactuie,  and 
the  special  object  of   their  industry.     Lalaiub.^    r. 


*  1.  It  u-iis  lu'ld  under  law  of  !8;j4,  that  a  maniit'actuivr 
wlu)  aflixed  to  liis  "ioods  tlic  naino  of  a  placf  otlicr  tlian  tliat  of 
Jiis  fa('t(»ry,  was  liable  to  an  action  In- a  niannlactiircmf  tlic  same 
kind  of  (roods  in  tlio  \)\nvxt  whose  name  liad  l)een  adopted. 
Blaise  i'.  Pitet,  C.  de  Paris,  12  AMi,nist,  lS(i4,  11  1<I.  :!S. 

2.  If  tlio  name  belongs  to  a  private  domain,  it  is  protected. 

(Grande  Chartreuse.) 


408 


FuENX'ii  Decisions. 


i    'k. 


Ii  "■ 


A])pel,  C.  (le  Ptiris,  7  June,  1850,  5  Ann.  de  la 
Fro.  i248. 

>5  Ho;].  Kfintc. —  Viu(iif/re  de  BuUi/. — WIkmi  a 
luiniiiriH'turer  has  i^iven  his  name  to  a  special  picj- 
dac't  oi"  his  nianuractiiie  {c  «/.,  Bnlly,  his  name,  to 
vinef-'ar,  tlius,  vuiaUjrc  dc  lhdly\  no  one  can 
employ  the  same  name  to  indicate  similar  products 
to  the  detriment  oi  tin;  roriuer  or  his  successor. 
Lemerciei-  i\  Millin,  Ti-ih.  Comin.  de  hi  iSeine,  1 
July,  J8r)0,  T)  Ann.  de  la  Pro.  ?A\(). 

%  1104.  Fancy  Kajnc — Poitdre  brcsih'enne. — 
Infrinf/ement.  Poiidre  hrislHenne,  a  name  given 
to  a  powder  for  destroying  insects,  is  a  good  trade- 
mark. 

2.  Defendant  is  g'uilty  of  an  infringement  of  the 
trademark,  if  he  use  it  on  packages  of  his  own, 
although  the  X)owdor  contained  therein  may  be 
diat  manufactured  by  the  owner  of  the  mark, 
(lourbeyre  r.  Bcxlevin,  C.  de  Paris,  9  July,  ISo;),  o 
Ann.  de  la  Pro.  2T)(). 

§  1105.  Si(/ns. — Every  merchant  who  has  a  sign 
has  a  right  to  oppose  the  adoption  ])j^  a  rival  of  a 
sign  which  can  cause  (umfusion  with  his  own,  even 
though  the  rival  was  the  lirst  in  the  xxirticular  lint; 
of  business.  Sign  and  name  >S/dlaii  were  used  Hrst, 
Au  Grand  SuUan  last.  The  latter  was  ordered  to 
be  taken  down  because  there  was  not  sudicient 
difference  between  the  two.  Ben-Sadoun  )\  Xessim- 
Dahan,  Trib.  de  Comm.  de  la  Seine,  7  September, 
185'J,  5  Ann.  de  la  Pro.  419. 

g  1100.  J//.s'rc;;rc.s'6V^/«//o;?..— Article  VIII.  of  the 
law  of  1857,  which  punishes  the  nse  of  a  mark 
designed  to  deceive  the  i)urchaser  in  reference  to 
the  nature  of  the  product,  is  not  aioplicable  to  a 
notice  iilaced  on  a  kind  of  food  for  fowls,  indi- 


;4i 

■w 


FuENcii  Decisions. 


4oa 


eating  a  greater  quantity  of  phosphate  than  that 
whicli  it  really  (contains.  Min.  Public  d.  lleuzo, 
C.  de  Cass,  3l)  Dec.  ISoi),  18  A/iu.  de  la  Pro. 
180. 

§  1108.  Secret  remedy. — Name  of  liuenlor. 
— Rob  depuraHf  de  D^fjccau-La^'ecleur. — Dei'en- 
dants  used  the  nuaie  oi  the  remedy  sold  l^y  plaint  ill", 
but  added  the  words  in  italics,  "rob  vegetal 
depuratir,  J'ormide  de  Boyveau-Lalfecteur."  The 
remedy  iiseir  had  become  public  property.  ILld., 
that  when  the  manui'acture  antl  sale  of  an  article 
has  become  public  property,  any  one  may  adver- 
tise and  sell  the  same  by  the  name  which  the 
inventor  gave  to  it,  and  by  which  it  is  usually 
known. 

2.  This  pi'inciple  applies  also  to  the  name  oi'  the 
inventor,  if  his  name  has  become  by  his  own  action 
a  necessary  element  hi  the  title  oi  the  product ;  but 
his  name  may  only  be  used  as  a  simple  designation 
oi'  the  thing,  and  not  in  «iu'h  a  maimer  as  to  lead 
the  i)iibli('  into  error  as  to  the  individuality  ol'  the 
manui'acture  and  the  source  oi"  the  pi(Kluct. 

3.  A  secret  remedy  especially,  which  has  become 
public,  may  h('  advertised  and  sold  by  any  one 
under  the  name  of  the  inventor,  preceded  by  the 
wolds,  seloitJa J'or//iule  de  .  .  .  il' the  inventor 
himself  gave  his  name  to  it, — it  l)eing  uiulerstood 
always,  that  th(3  advertisement  and  labels  are  so 
arranged  as  not  to  create  a  false  imi)ression  as  to 
the  nianui'acturer.  (liraudeau  de  tSaint-(iervais  o. 
Cliari)eutier,  C.  de  Cass,  31  January,  1800,  0  A/ut. 
de  la  Pro.  100. 

s^  110!).  Imitalioih  of  hottle.s,  wrappers  and 
lubels. — Defendant,  manufacturer  of  ferruginous 
pill;,  imitated  the  form  and  color  of  the  bottles, 


410 


FiiENCii  Decisions. 


r 

I 


-*.■■ 


p4 


■I'.r     ' 


and  the  wrappei-s  and  hibels  of  i)lnintiff,  mannfac- 
tiirer  of  a  siinilar  article,  but  cliaui^ed  the  form  of 
the  bottles  sliu;lit!y,  and  the  title  as  shown  by  the 
italieize(l  woids  ''  Unalterabh;  cjirbonate  of  iion 
pills  (ivciu'di iKj  to  llie  fonnula  i^i  V'nllet,  :ti)])roved 
by  the  Academy  of  Medicine."  //c/r/,  that  (I'lVn- 
dant  laid  a  <'iilpablc  intenticm  to  imitate  the 
mark  of  plaintiil'  in  such  a  manner  as  to  d(M'(M\c 
the  pid)lic,  and  cause  a  confusion  in  their  miud 
between  the  true  i)roduct  sold  by  plainriil's  and 
the  false.  Fi'ere  et  A'allet  r,  Mauchien,  Tril). 
Cori',  de  la  Heine,  lo  Februar^^  1800,  0  Aidi.  dc  la 
Pro.  11  ;i 

§  IIIO.  Inilkds. — Plaintiff,  a  manufactuicr  of 
velvet,  was  the  owner  of  a  ti'adeaiark,  represenl- 
ing'  two  fauK^s,  (me  blowing-  a  trumpet,  the  othe- 
supportiug  a  crown  of  flowers,  in  which  were  placed 
the  initials  J.  B.J).  Defendant,  also  a  manufac- 
turer of  velvet,  used  as  a  tradeuiark  an  anchor,  sur- 
mounted by  a  star  ;  below  the  anchor  were  traced 
the  mitials  J.  B.  D.  Held  no  infringement.  Da- 
vid i\  Brossier,  0.  de  Lyon,  20  Nov.  1800,  7  Ann. 
dela  Fro.  110. 

§1111. — ^Shndar/f//  of  names.  — Ana/or/o/fs 
trades. — Whenever  there  is  a  similarity  between  the 
surname  and  Chi'istian  name  of  two  rival  traders, 
the  one  who  has  been  the  longest  established  has 
the  right  to  demand  that  the  new-comer  take  such 
measures  as  are  necessary  to  prevent  confusion  be- 
tween their  establishments.  For  tliis  j)urpose  the 
new-comer  may  be  required  to  snppress  his  Christian 
name  <m  his  signs,  bill-heads  and  labels,  and  add  to 
his  name  a  distinguishing  qnalilication.  Laurens 
ti.  Laurens,  Trib.  de  Conn,  de  Marseille,  11  April, 
18G1,  7  ^1;/,'/.  dc  ta  Pro.  221. 


M 


French  I)i:(  isioxs. 


411 


§1112.  Infrumcmeat. — When  tlu'n?  exists  in 
the  vig'iK.'ttcs  and  luiinos  or  tilhs  iisvl,  siiiliciciit;  dit'- 
ferencos  to  prevent  conrnsioii  h.'tuccii  the  dillVrent 
prodncts,  tlier*'  is  not  n  IVaiidiilciit  iinilation  of 
marks  in  the  sense  of  tiie  law  oi"  liS,->7.  Clave  i\ 
Celurd,  C.  d(;  Lyon,  '11  N(n-.  1801,  8  .1////.  d,  l(U*ro. 
2.V.). 

j^  1 1 1;>.  J ol nil I'ddcmarl: bt'iici'c n  lud.io/j'drhircr.s' 
of  same  phice. — ManuCaetiirers  of  a  cily  or  locality 
may  ai;ree  upon  a  common  mark  I'oi'  theii'  i>roducts. 
In  such  case,  those  of  the  mannfactnrtMs  who  have 
regularly  de[)osited  this  common  mark,  ha\e  an 
action  a,uainst  the  manufacturers  of  another  locality 
who  have  adopted ii  mark  likely  to  cause  C(^iifusion 
between  the  products  of  tlui  two  i)luces. 

2.  A  ])order  composed  of  four  r(is(!-colored 
threads  running  from  (me  end  to  the  other  of 
cloth,  indicating"  that  it  was  manufactured  in  a 
certain  locality,  is  ii  trademaik,  and  it  is  an  in- 
fringement to  adojjt  for  the  sanur  kind  of  cloth  ii 
like  airangement  of  threads,  although  the  threads 
he  red  instead  of  rose-colored.  liicipi(v/\  Forges, 
C.  de  Paris,  28  Nov.  1801,  8 .1/;/^  dv  la  Pro.  ^17). " 

§  1114.  Mark  in  conivwti  iisv. — Altliough  the 
deposit  of  :i  trademark  estal)lishesa  itresumption  of 
property  in  him  who  has  made  the  deposit,  this 
presumption  may  be  destroyed  by  proof  tending  to 
show  that  the  mark  was  in  common  use  p.ievlous  to 
the  (h'[)Osit. 

2.  A  manufacturer  cannot  ai)proi)riate  in  a  spe- 
cilic  industr}",  by  deposit,  a  mark  in  general  use. 
8(jmborn  i\  Men^^el',  C.  de  Metz,  31  Dec.  1801,  8  Ann. 
de  la  Pro.  78. 

§  11  IT).  Fancy  name. — Liqncur  du  Monl  (kir- 
mcl. — Bv  Tiir:  (Joiut. — Because  Faivre  deposited 


■    J 

J 


412 


French  Decisions. 


J 


before  the  defendants,  nt  the  ofRce  of  the  .secretary 
of  the  tribiiniil  of  coMinierce,  unchu'  the  law  of  I8,")7, 
;i  hottk^  containing  a  liquor  witli  the  name;  Liqiteur 
(le  Moid  Carnid ;  and  by  means  of  this  (h'posit  ac- 
({iiired  an  exclusive  title  to  tliis  name  as  a  mark  of 
manufactnre;  and  because  the  name  J/o/////  iUirnul 
is  not  a  geiiei'ic  name  behjnging  to  commerce,  but  a 
I'aucy  nauK^  drawn  from  an  imaginary  province :  and 
I)uquaii'(>  tV-  Kussy  liave  infringed  the  mark  of  man- 
ufacliii'c  of  Faivre  by  malving  or  selling  a,  licpior 
under  the  same  name,  cS:c.  Damages  adjudged. 
Faivre  i\  l)u(iuaire,  Trib.  Civ.  de  la  Seine,  18  Mar. 
USC.ri,  8  .1////.  <lc  la  Pro.  238. 

>i  111(5.  Fane f/  name. — Translation. — Ban  ecar- 
latr.. — When  a  nr.inufactnrer  has  given  a  fancy 
name  to  a  well-known  prodnct,  that  name  belongs 
to  liini,  and  he  has  an  action  against  tho.se  who  nse 
either  the  name  ado[)ted,  or  the  translation  of  it  in- 
to a  foivigu  language.  {Eau  ecarlate  was  trans- 
lated into  Kvnrlci  icaicr^  and  the  translation  used.) 
I5urdel  c.  .lozean,  Tri!).  de  Comm.  de  la  Seine,  IJO 
May,  1802,  8  Ann.  de  la  Fro.  239. 

$^1117.  Imitation. — Papier  Job. — Priority  of 
la^c. — Althongh  the  manufactnrer  who  is  sued  for 
the  infringement  of  a  mark  may  prove  that  it  was 
used  previously  to  the  deposit,  the  owner  of  the 
mark  may  show  in  opposition  that  his  possession 
commenced  before  the  nse  proved. 

2.  That  there  be  the  olfense  of  frandnlently  imi- 
tating a  mark  under  article  8  of  law  of  18.')7,  it  is  not 
iiecessaiy  that  tlie  imitation  be  servile  ;  it  is  snf- 
ilcicient  if  it  is  of  the  kind  to  deceive  the  ordinary 
buyer.  In  conseqnence,  the  dissimilarities  which 
( .;cape  the  examination,  necessarily  snperiicial,  of 
biivejs — such  asthenameof  the  manufacturer,  or  a 


FiiENCii  Decisioxs. 


4i:i 


iiotioo  stating  that  his  products  must  not  be  con 
founded  witli  those  of  auotluM-  luauuI'Mr'turcr  -cau- 
iiot  be  invoked  as  a  dof<MiS('.   P»ni(h)U  r.  Iilanchard. 
C.  de  Montpellier,  21  June.  18(1:2.  cS  A/,/i.  <!*■  la  Pkk 
'273. 

J$  1118.  Lilvc  iiamcfi. — If,  in  ])i'inci])le,  evei-y  our 
has  tlie  i'i";ht  to  carrv on  anv  trade  he  (b'slrps  unilcr 
his  own  name,  it  is  on  tlie  condition  tliat  lie  u-f  il 
HO  as  to  avoid  all  confusion  with  a  house  pnniously 
existing". 

In  such  case,  the  court  should  ordi^r  the  neces- 
sary measures  to  avoid  confusion. 

(In  tliis  case,  John  Arthur  was  the  first  to  estab- 
lish an  agency  of  information  for  stiangeis,  iVc. 
William  Arthur  »fc  Co.  set  up  a  siniilai'  agency. 
They  were  requii-ed  to  add  to  tlieir  naaie,  "  House 
fon.ii^led  /y?  18()0.'')  Arthur  i\  Artiiii:',  ('.  de  Paris, 
*:3  May,  1802,  8  Ann.  de  hi.  Pro.  20-t.  To  sami^  ell'ect 
Cai-nidade  v.  Carnidade,  C  de  Bordeaux.  1(5  Aug. 
1805,  13  Ann.  de  la  Pro.  208. 

$^  1119.  Like  name  of  Compani/. — The  Lh>>/d 
fran<;als  was  a  company  of  marine  assurance, 
l)earing  a  good  reputation.  A  new  company  was 
founded  for  tlie  same  pur])ose  nndei-  the  name  of 
Uoijd  Central.  Use  of  name  Llo>/d,  i^enlral  wiis 
enjoined.  Lloyd  Fran(;ais  /'.  Lloyd  Central,  Tril). 
de  Comm.  de  la  Seine,  7  July,  1802,  8  Ann.  dr  la 
Pro.  412. 

§  1120.  Papier  de  riz  &  Papier  ereme  de  rlz. — 
By  the  Couut. — Considering  that  the  manufacture 
of  rice  paper  {papier  de  rlz)  is  open  to  the  i)ublic  : 
that  the  mark  of  Prudhon,  "00  feuilles  de  papier 
creme  de  riz,  systeme  Prudlum  et  Ce.  a  Paris;  ne 
pas  confondre  avec  le  papier  de  riz,''  cannot  be  re- 
garded as  reproducing  tlie  mark  of  Abailie,  which 


414 


French   Decisions. 


li-l 


reads  lis  follows  :  "  PapieM'  de  ri/,  formal  franrais. 
Notivelle  rabi'ication  speciale.  Abadie  et  Ce,  fabri- 
caiits  brevetcs  s.  t,^  d.  g.,  a  Palis.  Finesse,  soliditc 
douceur.'";  that  the  ])ookof  Priidlion  is  roiled  and 
composed  of  a  continuous  sheet,  wliieh,  in  unwind- 
hv^  presents  a,  succession  of  little  leaves  for  enclos- 
ing tobacco,  having  a  different  appearance  from  the 
books  of  Abadie,  wliicli  f')ld  Hat,  and  the  leaves  of 
which  form  a  little  volume :  that  these  differences 
leave  without  importance,  the  only  point  of  resem- 
blance, which  exists  l)etween  the  two  products,  /.  e., 
the  salmon  color  of  the  wrapper,  wliicli  cannot  be 
claimed  by  Abadie.  Complaint  dismissed — there 
being  neither  a,  violation  of  law  of  IS.")?  or  of  article 
j;>8:2  Code  Civil — overruling  the  court  below,  which 
held,  that  "if  the  use  of  salmon-colored  paper  is 
general  and  C(mun(m  for  enveloping  all  kinds  of 
products,  its  use,  joined  to  the  words  crenie  de  riz^ 
nnvnUs  an  intentional  imitation  susceptible  of  creat- 
ing a  courusion  with  the  products  of  the  plaintiff." 
Ai)adie  /'.  Pi-iullKm,  C.  de  Paris,  H.luly,  18G2,  8  Ann. 
(la  hi  Pr<K  2(5;}. 

jj  1121.  JVamc  of  pi'od/(cf.  —  Eatf,  ilela  FlorUle 
and  Kan  de  la  Flnoride. — Plaintiffs  di^posited  the 
name  JCau  de.  la  Floride  as  tlieir  ti'ademark  for  a 
hair  dve.  Defendants  called  their  dve  bv  the  naii!e 
Ean  de  la  Fluoride.  1\\  the  court  of  fii'st  instance 
defendant  was  enjoined  the  use  of  the  word  Floride, 
oi'  l^'liioride.  On  appeal  by  defendant,  it  was  con- 
ten(le<l  (hat  plaintiffs  represented  their  dye  as  a 
natural  water  imported  from  Florida  (Floride), 
whercMis,  defendant  only  offered  his  as  a  (diemical 
('(mipositicm  oi  Jhtor  with  nitrate  of  lead  or  silver, 
from  which  it  derived  its  name  of  Fluoride  ;  that 
this  chemical  term  designated  the  combination  of 


V  ■'> 


French  Decisioxs 


415 


iliior  with  less  electro-negative  bodies.  And  furtlier, 
he  pretended  to  liave  always  talcen  cai-e  that  there 
be  mai'ked  diffei'ences  between  his  bottles,  labels, 
prospectnses,  advertisements,  and  prices,  and  those 
of  plaintili's.  Decree  affirmed,  (iiiislaiii  r.  Liib- 
rugnei'e,  C.  de  Paris,  15  Nov.  1802,  U  Atni,  dc  la. 
Pro.  40. 

§  112:2.  Pttpil. — Name  of  Voiron. — An  appren- 
tice or  workman  cannot  annonncc  himscit  ns  a 
])npil  of  Ids  former  employei',  on  establishing  a 
business  for  himself,  without  the  employci-'s  con- 
sent, liommetin  i\  Crette,  C.  de  Paris,  4  Marcli, 
18G:5,  9  Ann.  de  la  Pro.  UW.     ^w.  ^  11  ±'). 

§  11:23.  Geor/r(ip7ii<'((I  Xonir. — A  majiiifactnrer 
who  places  on  his  ])r()dncts  the  nain<»  used  by  an- 
other, does  not  infilnge  liis  tradejnark  (Law  of 
IS.")?),  if  the  name  is  that  of  rhe  place  where;  the 
products  are  made.  The  name  of  a  luuidci,  siru- 
a'ed  in  the  townsiiip  where  the  dilTcicut  indus- 
tries are  established,  may  be  taken  as  the  place  of 
manufacture,  even  though  the  lirst  person  to  intio- 
duce  the  jM-oduct  gave  the  name  to  the  hamlet. 
Desire  Michel  i\  Achard,  C.  de  Cass,  lo  -inly,  b-^O!], 
9  Ann.  de  la  Pro.  328.  See  to  same  effect, ^^  1099, 
1100.-* 

^  1124.  Pane;/  Name.  —  When  P^r  <>f  True 
Name  Modified.— The  manufacturer  who  takes 
for  his  trademai'k  a  name  othei-  than  his  own,  can 
object  to  the  use  of  the  same  name,  by  a  manufac- 
turer of  a  similar  article,  with  siu-h  surroundings 
as  to  cause  confusion.  (Plaintilf  took  :is  his  trade- 
mark the  word /o///,  surrounded  by  an  oval.     I)c- 

■■"  C'lihfra,  if  tlic  name  l)i'lontfs  to  ii  private  domaiti  ((iraiido 
CImrtrcuso).  §l~li),  or  if  it  i^<  a  faiiry  iiumc  (Mont  Caiinci^ 
§  1115. 


"fliri 


416 


French  Decisions. 


fendant,  wliose  name  was  Joly,  imitated  plaintiff'^ 
mark.) 

2.  In  such  case,  tlie  court  should  order  sucli 
modiiications  as  it  tliinks  necessary  to  hinder  the 
confusion  produced  ;  especially  conii)el1inij;  the  last- 
comer  to  change  his  mark,  eithei"  by  adding  his 
given  name  or  by  changing  the  form  and  dimen- 
sions of  its  surroundings.  Massez  f\  Joly,  ('.  <!<* 
Paris,  20  August,  1803,  10  Ajui.  dr  hi  Pro.  :n8. 

J^  112,"),  Pupil. — Name. — A  xniichaser  of  a  busi- 
ness nuiy  biing  an  action  to  restrain  tlu^  former 
l)Upils  or  employees  from  calling  themselves  such 
on  their  signs  or  mauvd'actures,  and  this,  althougU 
the  former  head  of  the  establishment  authorized 
them  to  do  so  after  the  sale.  Dubois  i\  Demoiselles 
Louise  &  Liuule,  Trib.  de  Comm.  de  la  Seine,  27 
October,  180;J,  10  Ann.  de  la  Pro.  187.     See  ^<  1122. 

^  1120.  Proper     A^anie. — Kdiiw  oj'  prod iicl. 

— FjlLvir  ct  liqiteiir  /iaspail. — FlaiiitiIVs  (R:ispail 
&  Sons,)  brought  suit  against  defendants,  manu- 
facturers of  a  hygienic  liquor,  invented  by  Kaspail, 
Sr..  to  restrain  the  use  on  their  lal)els,  advertise- 
ments and  i)rospectuses,  of  the  name  L/q/frnr  on 
Elixir  /ia. spoil  (Li(pior  or  Elixir  llasjuii!),  &c., 
also  for  damages.  Held,  that  as  Kaspail  had  foi  a 
long  time  authorized  the  use  of  his  name  on  the 
bottles  in  which  the  distillei's  sell  the  product. 
known  as  Lif/Ki'ur  ou  Elixir  Jiaspdil,  and  Jiad 
alU)\ved  the  receipt  I'or  the  liquor  oL'  whi<'h  he  was 
the  invenror,  to  be(;onie  public  property,  and  had 
by  that  means  authorized  the  manufacture  of  the 
liqnor.in  which  he  had  not  reserved  an  exclusive 
property,  it  I'oljowed  tluit  he  had  permitted  the  use 
of  his  nam(>, — by  which  alone  the  nianul'aclurers 
could  make  it  kucnvn  to  the  public, — and  no  cause  of 


Fr.Excii  Di.cisioxs. 


417 


action  was  sliown.  On  '^ippcal  it  was  lield,  tliat  as 
the  iiciiior  of  wliicli  llaspail  had  publishetl  his 
formula  in  tlie  Manuel  AiDtvairc  dc  J^.nilc,  was 
linown  to  the  public  under  tlie  name  L'tqiu  ur  on 
Elixir  Ran  pail ;  that  as  ll.'ispail  oidy  publishtsd 
his  formula,  and  did  not  give  liis  name  to  the  pub- 
lic, and  the  name  was  an  inipi'es('ri[)tible  ])i'o])ei'ty, 
llaspail  had  the  right  to  limit  his  license  in  its  use, 
and  in  default  of  liis  contiinwd  consent,  tli(^  use 
which  defendants  had  made  of  Ins  name^  hail  been 
without  light.  Judgment  reversed.  Kasjiail  v. 
Combier-Destre,  C.  de  Paris,  U  Novemb«M',  JSO;},  0 
Ann.  (Ic  la  Pro.  377. 

^  1127.  Natural  prodnH. — Fancij  nautc. — Lu- 
ciline. — Evidence. — A  fancy  name,  such  as  I nciline., 
used  to  designate  an  essentially  natural  pi'oduct, 
(rehned  petroleum)  is  the  property  of  him  who  lirst 
makes  use  of  it,  and  sliould  be  ])rorected  as  a  trade- 
mark Avheii  its  legal  dei)osit  has  been  made. 

2.  The  burden  of  proof  is  on  tlio  party  who  pre- 
tends that  the  name  has  gone  into  public  use. 
Cohen  (\  iMaris,  ('.  de  Paris,  :28  Noveml)er,  1803,  10 
Ann.  de  la  Pro.  1  (>.").     See  §  1114. 

§  1128.  (Jeneric  name. — Eoreiffn  languape. — 
Peppermint-London.  —  Mi.srejn'esentation.  —  The 
one  wlio,  in  dejiositing  his  tiademark,  gives  to  the 
product  the  usual  name  which  it  bears  in  common 
language,  without  a  special  title  or  the  addition  of 
a  distinctive  sign,  cannot  claim  property  in  the 
name, — e.  //.,  Pepi)ermint-London. 

2.  It  is  so,  although  the  name  is  translated  into 
a  foreign  language. 

o.  If  there  has  been  added  to  the  common  name 
the  false  namo  of  a  foreign  ])lace  of  manufacture, 
there  is  deceit  in  the  nature  of  the  thin^^  sold,  which 


i'.n'Xil 


mm 


m  !t 


*  1  '"> 


French  Decisioxs. 


do[)iive.s  tlie  author  of  the  falseliood  of  liis  ri/^lit 
of  action  for  infringement.  Maiiprivez  v.  IjonclK't, 
C.  (le  Paris,  2G  Febnuiry,  18(34,  10  .1/^;^  de  la  Pro. 
820. 

§  1120.  Brposit  of  marl'. —  Ahandonnicnt.— 
Use. — Tlie  deposit  required  by  article  2  of  hiw  of 
1857,  is  a  prerequisite;  to  a  suit  for  infiingenient  of 
a  trademark,  but  it  does  not  create  properly  in  the 
mark.  Tliei'efore,  it  belongs  to  tlie  judges  of  th(; 
fact,  to  decide,  in  case  of  a  contest  <m  this  jHiint, 
wlielher  the  one  who  made  tlie  deposit  had  rirlier 
himself,  or  by  others,  the  exclusive  property  in  the 
mark,  oi-  whether  it  had  in  whole  or  in  part  fallen 
into  public  use. 

2.  Although  the  usurpation  of  the  name  of  a  man- 
ufacturer is  never  legal,  it  is  not  so  of  an  enil)!eiii- 
atic  sign  (U-  of  a  label  which  has  notliing  personal. 
and  a  manufacturer  can  be  adjudged  to  h:ive  vol- 
untarily abandoned  it.  Leroy  >\  Caliuel,  C.  de 
Cass,  10  March,  1804,  10  Ami.  \le  la  Pro.  im.  See 
§  1127. 

§  1130.  Fancy  navie.  —  Pcrhs  tTl'llicr.  —  The 
name  j??rTZr.s%  applied  to  etluu'and  other  iiliarmaceu- 
tical  produ(!ts,  is  applied  to  the  capsules  oi"  enve- 
lopes, and  not  to  the  medicine  itself,  and  not  being 
otherwise  a  generic;  name,  and  one  necessary  to  dis- 
tinguisli  the  prodnct,  can  legally  be  an  object  ot 
exclusive  property,  protected  by  law  ol"  IS.')?. 
Clertan  i\  Charpentier,  C.  de  Cass,  22  March,  18(54, 
10  Ann.  (le  la  Pro.  841. 

§  1131.     Eniployee, — Lllve  name. — An  employee 
cannot  state,  in  his  circulars,  on  entering  into  busi- 
ness for  himself,  his  services  in  a  house  of  which 
he  is  a  rival.     In  the  case  of  like  names  tlie  mann 
facturer  who  founds  a  new  house,  ought  by  the 


ij  f- 


FiiExcii  Dkcisioxs. 


41!) 


addiiioii  of  liis  given  ni'iiio,  or  by  somf  otluM- tMs- 
tliK'tivo  (luulilicntioii  to  jivoid  till  coiii'iision  witli  llio 
old  lioiiso.  Foiild  i\  Iloiiegii^oi',  Trih.  dc  (V)niiTi.  df 
la  Seine,  11  April,  1804,  10  Aim.  de  la  Pro.  '.l'2'.\. 
See§^  1122,  112."). 

^  11152.  Ndinesi  of  Forel(f)i  M(t)iiif(i('f)ir(  rs. — 
Loit'j  use  ill  Franco. — Altliough  the  law  of  \Ku. 
and  the  treaty  of  ISOO,  between  Fiance  and  Yavz- 
land,  gave  to  English  nianiifactiii'ers  tlie  light  to 
obtain  the  exelusive  n.se  in  l-'rance  of  tlieir  names 
and  marks,  by  making  the  deposits  I'eqiiii'*^!  by 
law,  this  is  n;>t  the  eas;»  if  tin^  names  and  mnrlvs 
so  deposited  h;id  pix.'vioiisly  g()n;3  into  geiuMtd 
nse  ;  consequently  the  judgment  was  ron-ect  whieh 
decided  that  the  English  maiiiii'-u'turers  have  a 
legal  riglit  in  Fi-ance  to  the  s])eci.d  mark  which 
tliev  have  deposited  bv  reason  of  the  treatv.  but 
not  to  tlie  employment  of  tlu^ir  name,  ir  being 
proved,  that  for  more  than  lifty  years  that  name 
had  been  used  in  Prance,  to  indicate  not  the  origin, 
but  the  nature  of  certain  products.  Spencer  /•. 
Peigney,  C.  de  Cass,  *3()  April,  18(54,  10  .1;/;/.  (h-  hi 
Pro.  197. '•• 

§  li;53.  Fancy  name. — ^'-  Eiurc  iiidieinir.^'—  \ 
fancy  name,  such  as  "Encre  indi<Mine"  (Indian 
ink),  applied  to  a  known  product  (a  common  ink). 
becomes  a  tradeniai'k  under  the  law  of  18.'7.  wluii 
the  legal  deposit  has  been  made,  cnievenemeiir  /'. 
Forest,  C.  de  Bordeaux,  HO  June,  18()4,  10  Ann.  dc 
la  Pro.  440.     See  §  1110.     (Scarlet  water). 

§    1134.     Fancy    name. — VoJor    and    shape    <>f 

*  To  the  same  effect.  Stubbs  r.  AstiiT.  ('.  de  Paris.  •,".»  .\|.ril. 
1804.  10  Ann.  de  la  Pro.  213  ;  S.  ('..  on  ;i|.)K'al,  C.  do  (  a-.  { 
Fcl)riiiiry,  1805  ;  11  Id.  81.  Before  the  Ircaly,  Spriicer  >\  Meii- 
nier,  C.  tie  Paris,  3  June,  1843,  Jouriud  du  Paliih,  1843. 


A20 


FiiENcii  Decisions. 


hooves. — The  name  "//Z   d' Alsace,'"  Alsace  thread, 
is  a  good  trademark  wlieii  applied  to  thread. 

2.  There  is  an  unlawful  rivalry  in  the  servile  imi- 
tation of  the  form,  color  and  disposition  of  the 
boxes  of  another  manufactnre,  so  as  to  establish  a 
confusion  between  their  products  (C.  C.  V.iS'I). 
Dollfus  V).  Lalleniand,  C  de  Paris,  H  January,  ISO."), 
11  Ann.  de  la  Pro.  110. 

§  1185.  Faiwii  name. — "Z«ffi  frapp  1st Ine.'" — 
The  fancy  name  ''La  trappistin.e,'''  given  to  a  liquoi-, 
is  a  good  trademark.  There  is  such  an  imitation 
of  a  mark  as  to  give  rise  to  an  action,  when  the 
adoption  of  the  names  and  labels  may  create  a  (ion- 
fusion  between  the  products  of  different  manufac- 
turers, even  though  the  name  is  preceded  by  the 
words  "■  dite'^  or  '•''faoonde'''  ("said"  or  "style 
of"). 

(The  word  "' trapplstlne''''  was  derived  from  the 
name  of  the  convent  La  Trappe,  where  the  liquor 
was  first  made.)  Michel  ?).  Stremler,  Trih.  de 
Comm.  de  la  Seine,  17  January,  1865,  11  Ann.  de  la 
Pro.  284. 

§  1135r^  Similarity  of  names. — The  use  of  a  firm 
name,  identical  with  that  of  a  firm  already  exist- 
ing, is  not  unlawful  in  itself,  and  the  use  of  the 
name  cannot  be  enjoined.  But  when  the  use  of  the 
name  is  accompanied  by  unwarranted  manoeuvres, 
to  deceive  buyers,  the  new-comers  should  be 
decreed  to  add  such  things  as  are  proper  to  i)r('- 
vent  confusion, — especially  the  nnMitiou  in  \\\e\x 
firm  name,  and  in  their  marks  and  labels,  of  tin' 
given  name  of  the  merchant,  and  the  date  when 
the  second  house  was  founded.  Louis  Roederer  k 
Co.  Ti.  Theophile  Roedei-er,  (J.  de  Paris,  G  F(>bruaiy, 
18G5,  11  Awn.  de  la  Pro.  68.     See  §  1118. 


FiiENCii  Divisions. 


421 


§  IVoob.  Gi/Undrhud  form. — Qi gar  die.  jxipcr.  ~ 
The  cylindrical  sluipe  of  ii  packa^-o  of  cigai'f^lte 
pai)er  is  not  of  itself  a  good  trademark.  Tlie  imita- 
tion of  this  shape  is  not  an  act  of  iiidawfiil  livaliy 
in  business,  Prudhon  r.  Villaret,  C.  de  Paris,  ^4 
June,  ISG,"),  11  Ann.  de  la  Pro.  44;J. 

§  llIiG.  Generic  erahJem. — Leaf. — A  tiadeniark 
made  up  of  a  number  of  elements,  of  which  tlie 
principal  is  a  vine  leaf,  a  generic  object,  is  not  in- 
fringed or  fraudulently  imitated  b^^  the  use  of  the 
same  generic  object,  if  accompanied  by  tliilVMent 
names  or  ornaments,  striking  to  the  eye.  Denis  v. 
Vignier,  C.  de  Bordeaux,  0  August,  \'!^()7).,  J 2  Ann. 
de  la  Pro.  43t). 

§  1137.  Name  qfmanvfaeturer. — Lifrhujcment. 
— When  a  label,  adopted  as  a  trademark,  contains 
among  other  distinctive  signs  the  name  of  the 
manufacturer,  it  is  not  necessary  that  tiie  name  be 
I'eproduced  or  imitated,  to  constitute  an  infringe- 
ment,— it  is  sufficient  if  the  other  parts  of  tlje  label 
are  so  imitated  as  to  tend  to  deceive  l)uvers.  ]3ass 
T.  Harris,  C.  de  Paris,  31  March,  180.1i,  and  C.  de 
Cass,  12  August,  1865,  12  Ann.  de  la  Pro.  101. 

§  1138.  Imitation  of  Label. — (reneric  name. — 
Serpents  de  Pliaraon. — A  fraudulent  imitation  of  a 
mark  or  label,  under  art.  8,  law  of  18,")7,  is  made 
when  the  imitation  is  of  such  a  nature  as  to  deceiv(? 
the  public.  Therefore,  differences  in  details,— such 
as  a  modification  of  the  name  of  the  i)roducf,  and 
the  indication  of  the  name  of  the  manufactui-er, — 
do  not  take  out  of  the  operation  of  the  law,  marks 
and  labels  on  which  are  imitated  the  form  and 
ai'rangement  of  the  labels  of  another  manufa(*turer 
in  such  a  manner  avS  to  create  confusion  between 
their  products. 


4:2 


FnKxcii  Diyisioxs. 


mM 


2.  The  word  serpent,  as  nppliod  to  :i  toy  TTindf 
iVoni  sHlpJioct/anitle  of  uierrnrj/,  \\\\\c\\  iissiinifs 
the  form  of  a  sei'peut  on  beiriu;  set  on  lire,  is  a  gen- 
eric name.  Burnett  o.  Kubler,  C.  de  Paris.  '2\ 
March,  1800,  12  ihui.  de  hi  Pro.  144. 

>^  li;»9.     Fancii  name. — Popicr  Joh^  and  papitr 
Oner  re  d  Job. — Plaintiff   used   as   his   trachoma  ik 
his   initials   J.  B.,    separated  l)y  a  lozenge.     His 
cigarette  paper  became  x>opnlarly  known  from  tin's, 
as  Job  paper.     Defendant  sold  ('i.g-iirette  pa])ei'  i)Ul 
in  books  of   the  same  color  as  those  of  ])hiiiitilf. 
but   with   different    ornaments,    Ix^iriii,!^    in    lar.uv 
characters,   Guerre  d  Job.     Papier  tre.s  Kirperirur. 
Paris,  80  Rue  de  llivoli,  80  (War  on  Job.      Very 
snpei"i(n'  prtper,  &c.).     On  the  revei'se  was  a  notice 
that  the  mark  was  not  the  same  as  that  which  was 
called  Job,  bnt  the  x)aper  enclosed   was   rendeied 
superior  to  the  Jobhy  the  addition  (»f  hy<j;ienic  sub- 
stances.    I/eld,  that  as  tlie  lawful  rivalry,  which 
ought  to  exist  betAveen  two  merchants  cannot  be 
extended  to  embrace  the  right  to  make  a  ])artis:ni 
strife  with  a  rival,  and  to  designate  him  by  name  in 
advertisements  and  prospectuses  running  down  his 
goods,— the  aim  of  the  advertise!'  being  to  tui'u  ro 
Ills  profit  the  customers  of  his  rival     .     .     .     in- 
junction should  be  granted  against  the  use  of  thf 
word  Job,  by   defendant.     Damages.     Bardou    /•. 
Sabat(m,  Trib.  de  Connn.  de  la  Seine,  10  May,  ISMC, 
14  Arm.  de  la  Pro.  140.     Affirmed  on  appeal,   1.'' 
Id.  115. 

§  1140.  Name. — Infrinrfement. — Bei'tin  wtis  a 
manufacturer  of  gloves,  wliicli  he  called,  Urrliit 
gloves.  Defendants  sold  gloves  not  of  Beitiii's 
make,  which  thev  called  Berlin  rilorc.s.  Thev  wei»' 
enjoined  against  the  use  of  the  name  of  Berlin,  "ii 


FuKxcii  Dix'isroxs. 


420 


fi:<)o;].i  not  mado  ])y  him.     JJertin  r.  Tacoiinet,  ('.  do 
Paris,  2;)  June,  18U(>,  \M  Ann.  de  hi  Pro.  ^m. 

i  1L41,  Sale  of  nuirk. — A  nianuracruier  may 
adopt  dilTerent  mai'ks  and  names  for  his  produfts. 
lie  may  sell  one  of  his  marks  to  another.  Ahadie 
V.  Priidon,  C.  de  Cass,  27  July,  18G0,  12  Ann.  <!>'. 
la  Pro.  :u:5. 

See  §>5  1149,  1154. 

^'  1142.  Fancy  name. — Rot/alVicloria. — T!ie 
union  of  two  English  words,  sucli  as  lioijal  \U-- 
iurla,  constitutes  a  good  trademark  in  France,  even 
thougii  the  same  words  had  been  employed  se})- 
arately  in  la])els  on  simihir  merchandise,  especially 
on  iiins, — or  even  united,  but  on  different  merchan- 
dise, such  as  needles. 

2.  Where  a  label  is  composed  of  a  title,  sucli  as 
lioi/al  Victoria.,  and  various  statements  and  <»i'na- 
ments,  the  use  of  the  label  with  the  distinctive 
title  changed  {e.  r/.,  lloyal  Victoria  to  Royal 
llegina),  is  a  fraudident  inutation  of  it  (Art.  8, 
Law  of  IS.")?).  Sargent  v.  Romeu,  C.  de  Paris,  17 
Janiuiry.  1807,  VS  Ann.  de  la  Pro.  21.  To  same 
elfect,  Sargent  «.  Roger,  12  Id.  170. 

g  1143.  Geographical  name. —  Unlanrf'id  rir.al r ij . 
— liuitaiion  of  lirodtictH. — When  a  manufacturer 
has  adojDted  a  mark  containing  the  name  of  the 
place  where  liis  factory  is  situated,  it  is  an  act  of 
unlawful  rivalry  on  the  loart  of  a  manvd'acturer  of  a 
neighboring  township  to  servilely  indtate  the  kinds 
and  the  styles  of  the  products  of  the  first,  and  to 
insert  in  his  jDrospectuses  and  letter  headings,  the 
name  of  the  same  place. 

In  enjoining  such  an  abuse,  however,  the  use  of 
the  name  of  the  X)lace  should  not  be  forbidden,  if  it 
is  necessary  to  indicate  the  situation  of  the  nuinu- 


424 


FuKxcir  Diocisroxs. 


^1 


factory,  and  e.spocially  to  inak(;  known  tin;  poft 
olTive  of  the  manul'actnrei'.  (Plaintill'  cstablisluMl  ;i 
ivpntation  tis  ii  nianiifatituiei'  of  niachine-niadt^ 
tiles  at  Montchaniu.  Defendant  set  up  a  rival  fac- 
tory at  Saint-Julien-snr-d'lleune,  five  miles  jiway. 
He  imitated  not  only  tlie  tiles  of  the  plaintiff,  but 
also  all  the  changes  made  by  him,  and  inserted  in 
his  mark  ^' par  Montchanhiy)  Avril  v.  Perrusson, 
C.  de  Dijon,  8  May,  1807,  13  Ann.  de  la  Pro.  ;}4r>. 

§  1144.  PlwraULij  of  trademarks. — ^Tliere  is  no 
law  preventing  the  adoption  and  use  by  a  manufac- 
turer or  merchant,  of  more  than  (me  trademark  at 
the  same  time.  The  same  trademark  may  be  the 
property  of  several  pers(jns  jointly.  Abadie  t\ 
Berha,  C.  de  Paris,  23  May,  1807,  13  Ann.  de  la 
Pro.  348. 

See  §§  1113,  1141,  llo4. 

§  1145.  Creme  d'  Arr/ent,  applied  to  a  new  chem- 
ical product,  of  use  in  the  arts,  is  a  good  trademark. 

It  l)elongs  to  the  first  one  who  used  it,  irresi)e('- 
tive  of  the  date  of  deposit  with  tlie  clerk  of  the 
Tribunal  of  Commerce.  Its  use  by  another,  without 
right,  before  the  deposit,  does  not  invalidate  the 
mark.  Levy  v.  Bizet,  Trib.  de  Comm.  de  Rouen,  31 
Nov.  1807,  14  Ann.  de  la  Pro.  105. 

§  1140.  Trnitatlon. — Like  names. — Charles  Ca- 
mille  Heidsieck  was  a  manufacturer  and  exporter 
of  champagne.  Defendants  formed  an  association 
for  the  manufacture  and  exportation  of  champagne 
to  the  United  States,  and  obtained  the  use  of  the 
name  of  Herman  Heidsieck  who  lived  in  Saint  Louis, 
U.  S.  They  servilely  imitated  the  mark  of  Charles 
Heidsieck  upon  tlie  corlvs  of  bottles,  substituting 
only  "Hermann  "  in  place  of  "  Charles  ;"  they  also 
imitated  the  four  red  bars  on  the  covers  of  the  bas- 


Fkkncii    I)i:risi<».vs. 


42.1 


k<^!s  enclo.siiiL!;  his  ('liaiiipn^^-iic.  IlchL  Mint  lli<> 
iTprodiurfion  ol'  tlni  luime,  thr  iirraii.u'cmnit.  and 
the  cmMeiiis  of  a  niarlv  in  orch'r  to  cause  a  coiil'ii- 
sioii  between  i)r()(lii('ts,  and  to  (h'ceive  buyers,  is  a 
I'rauduk'nt  imitation  of  ;i  mark  undei-  aits.  S,  i),  \',\ 
and  14.  of  Law  of  IH.')?,  even  thouuli  a  i)erson  bear- 
iw^  the  same  name  lias  been  associated  in  the  fiaiid, 
and  his  ^iven  name  8u])stitiited  for  that  of  the 
owiiei'  of  tlie  imitated  mark. 

2.  All  those  who  have  i)arti('ipat<'d  in  such  a 
fraud  should  be  i-e^arded  as  accoiiii)lic('S,  whelhei- 
they  have  caused  the  false  marks  to  be  made,  or 
have  <i;iven  dire(!tions  for  the  purchase  and  e\j)oit 
of  the  merchandise  fraudulently  marked.  Ileidsieck 
i\  Souris,  C.  de  Paris,  11  Dec.  1SG7,  14  Aim.  dv.  hi 
Pro.  9,"). 

See  ^^  1148,  1189. 

§  1 147.  Generic  nam  es. — Illz  Carton  ne. — Pit  pier 
de  r!z. — When  a  manufac^turer  has  ;i(h>[)ted  as  a 
trademark  for  his  i)roduct,  a  name  which  indicates 
its  composition, — e.  /y.,  pctpiir  dcriz  (i-ice  paper),  he 
cannot  forbid  the  adoption  by  another  manu fact  luer, 
in  his  trade,  of  the  genuine  name  rice, — c.  </.,  as  in  riz 
cartoune  (rice  boarded),  feu i lie  de  riz  (ric(;  leaf), 
rouleau  de  riz  (rice  roll).  Lacroix  (\  Abadie, 
C.  de  Bordeaux,  17  Dec.  18G7,  14  Ann.  de  la  Pro. 
100. 

See  §  1120. 

§  1148.  Similar  firm  name. — Concur reiicr  d'e- 
loyale. — The  courts  have  the  riglit  to  iii([iiire 
whether  a  person  whose  name  appears  in  a  lirm 
name  is  really  a  partner,  or  whether  his  name  is 
used  only  as  a  means  of  unlawful  livalry  with  an- 
other firm,  and  they  may,  if  fi-and  is  discov<'i'ed, 
enjoin  the  use  of  the   name.     See   §§   1081,  1088, 


IMAGE  EVALUATION 
TEST  TARGET  (MT-3) 


&< 


^/ 


/. 


•^.v*'^ 


^'  ^J^ 


"^ 


:/. 


1.0 


1.1 


1^ 

■  4  0 


11:25  III  1.4 


—    6" 


2.0 


II 


1 1.6 


% 


>> 


Hiotographic 

^Sciences 

Corporation 


33  WIST  MAIN  STRUT 

WIBfTIR.N.Y.  145t0 

(716)  •72-4503 


^ 


w 


Mi 


m 


m 


FiiExcii  Decisioxs. 


IK'.V/.  Weilo  ?\  veuve  Clicquot,  C  de  Paris.  5 
Marcli,  lfU;8,  14  Ann.  dc  la  Pro.  288. 

X  1 140.  tilth'  of  tracIcnKU'k. — Propeiiy. — Ea  ii  <h'. 
21iliH.se  dcs  Carjncs. — The  ]i(]Uf)r  eau  de  iueliss(^  was 
known  to  tlie  piiblie,  and  tli(;  name  was  in  coninion 
use.  Plaintiif  claimed  to  liave  purcliased  from  the 
convent  of  Cannes  tlie  secret  of  the  manufaclure  of 
the  eau  de  nielisse  made  by  tlie  monks  of  Cannes, 
and  (tailed  Ban  dr  MiUnse  dcs  Cannes,  as  well  as 
'ieir  trademark,  labels  and  bottles.  Defendant 
iride  a  liquor  which  he  called  '''  Eaa  dcs  Carnies 
■J'  •<  ^ riiisses.,  la  scale  Tcriiahlc  eau  de  jneli.sse  des 
.  .  ;,?,  imitjiting,  at  the  same  time,  to  a  sufiicient 
ex  ent,  as  was  held,  to  deceive  the  public,  the  form 
and  ai)pearance  of  the  labels  of  plaintiff.  The  ])rin- 
cii)al  defense  w-as  that  the  ran  was  a  medicine,  and 
l>laintilf,  not  being  a  pharmaceutist,  had  no  I'uht 
to  make  and  sell  it.  Ileld.^  that  a  trademaik  regu- 
larly deposited  is  propeity,  and  is  not  affected  by 
the  riiiht  of  the  owner  to  manufacture  the  i)roducts 
of  which  it  is  the  trademark.  Boyer  v.  Boyer, 
C.  de  Cass,  8  May,  1808,  15  Ann.  de  la  Pro. 
102. 

g  lino.  "^  Name  of  i^roduct. — Eau  de  Melisse  dts 
Carnies. — Iniilation  of  labels,  seals,  vials  and 
hoj-es. — The  name  of  a  product  (c.  g.,  Eau  dcs 
Carnies  or  Eau  de  Melisse  dcs  Carme.'i),  which  de- 
signates its  origin  and  the  name  of  its  inventors, 
is  the  ])roperty  of  the  latter  and  their  legal  jejire- 
sentatives.  In  consequence,  the  use  of  that  title  on 
labels  and  goods,  as  well  as  on  prospectuses  and 
advertisements,  is  an  unlawfid  rivalry  {concurrence 
deloyale),  giving  rise  to  an  action  for  an  injunction 

*  This  section  should  immediately  iirecede  §  1055. 


^IF 


Fjie.ncii  Dixisiox^?. 


4-27 


and   (lamjigfs.     The  case  is  still   s{ ron.^vr  if    rlie 
mni'ks,  labels,  vials  and  boxes  oi"  the  inventor  are 
imitated,  as  well  as  the  name. 
2.  Complete  it'entitv  of  nuirk  is  not  ncces.sjirv  to 

■La  «. 

(3onstitute  an  infringemr-nt ;  it  is  snfTicient  if  the 
infringing  mark  resembles  the  true  so  as  to  lead 
the  publie  into  an  errorprejudieul  to  the  proprietor. 
Injunction  against  use  of  title,  also  against 
indtaticm  of  lal)els,  vials,  &<•.  Damages.  Boyer  n. 
Massieu  David  &  Co.,  Trib.  de  Comm.  de  la  Seine, 
11  April,  18:1"),  C.  de  Paris,  11  May,  1830,  21  Ann. 
de  hi  Pro.  11. 

§  115].  Iiifrinijeincid. — M<innfarliirn\s'  of  stpii- 
rious  loh(7s. — The  manufacture  of  trademarks  and 
labels  belonging  to  another,  without  the  <'ons(Mif 
of  the  ownei',  is  an  infringement  of  the  same  under 
the  law  of  1857.  The  use  of  tlu^  trademark  or  label 
is  not  necessary  to  constitute  infi-ingement. 

2.  A  lithographer,  in  whose  establishment  labels, 
in  course  of  manufacture  for  a  i)erson  who  is  not 
the  owner  of  the  trademark  theieon,  are  seized,  is 
liable  to  the  penalties  prescuihed  hy  the  law  of  18.")7. 
The  agent  who  orders  labels  nuide  for  any  other 
person  than  the  proprietor  of  the  mark  is  liable  to 
the  same  judgment  as  an  accomplice.  Martell  i\ 
Badoureau,  C.  de  Paris,  15  May,  1808,  14  Ann.  de 
la  Pro.  120. 

§1152.  Descriptive  name. — When  the  name  of 
a  dealer  has  become,  by  general  use,  the  name  of  a 
product,  the  successor  of  the  dealer  has  no 
right  of  action  for  unlawful  rivalry  against  another 
dealer  who  has  announced  for  sale  the  same  jjro- 
ducts  rntler  the  same  name. 

(One  Ternanx,  a  dealer  in  shawls,  had  given  his 
name  to  a  particular  kind  of  brocade  shawls,  which 


"rsm^r"* 


<w^ 


'1 


428 


F:ii::\C':i  Diiirsioxs. 


i<  '■>  ■ 


were  generally  made  by  nianiifacriireis  and  called 
THi'naux  shauls,)  Bourulioiiet  r.  Tisseion,  C.  de 
Paii:s,  11)  November,  18(58,  15  A/ui.  de  Id  Pro.  90. 

^  li.")3.  VurchaHiu'8  of  ((rlides  hcur'unj  false 
iradcnuirk  have  a  light  of  activ)n  against  ':^w  seller 
if  they  bought  the  same  in  good  faith,  and  have 
been  adjudged  to  be  guilty  of  infringement  in  a 
suit  by  the  owner  of  the  mark.  Sargent  /'. 
Willems,  Trib.  Civ.  de  la  Seine,  2  January,  18G0, 
16  Ann.  de  la  Pro.  27. 

§  11/54.  Varietij  of  marks  of  same  person. — 
Family  seal. — Aeqtiisition  <f  trademark. — A  man- 
ufacturer or  merchant  may  adopt  special  marks  or 
labels,  indicating  the  quality  and  nature  of  the  pro- 
ducts to  which  they  are  affixed,  in  addition  to  the 
mark  intended  for  all  his  products. 

2.  Property  in  a  trademark  is  acquired  indepen- 
dently' of  the  legal  deposit,  by  one  who  iirst  uses 
and  continues  to  use  it.  The  imitation  and  usurpa- 
tion of  his  rivals,  even  though  they  occurred  before 
the  deposit,  cannot  be  pleaded  against  him. 

3.  Whenever  a  trademark  taken  from  a  family  seal 
has  become,  by  its  industrial  ajjplication,  the  prop- 
erty of  a  commercial  house,  its  use  by  members  of 
the  family  in  their  daily  social  life  does  not  author- 
ize any  of  them  to  use  it  commercially  in  the  same 
trade  with  one  who  had  previously  adopted  it. 

4.  A  trademark  is  fraudently  imitated  when  the 
imitation  is  of  such  a  nature  as  to  deceive  buyers. 
Consequently,  differences  of  detail — such  as  the 
introduction  of  different  emblems — do  not  cure  the 
fault,  if  the  whole  tends  to  cause  confusion  of  jn'o- 
ducts. 

(The  part  of  family  arms  used  was  a  man  blowing 
a    trumpet.      Subject    of    manufacture,  —  sewing 


•^pwp^f 


m 


FiiKXCTi  Decisioxs. 


4en 


tliread.)  Kerr  r.  Clark,  C.  de  Paris,  4  February, 
ISO!),  in  Ann.  <lr.  la  Pro.  2:)\). 

See  i\\A\. 

^  1155.  Fancy  Name.  —  Ih'po.sil. — A  mei'cliant 
has  a  right  to  give  a  fancj'  name  to  ai'tieles  niann- 
factured  by  othei's  especially  for  him. 

2.  Tlie  mark  Mari('-Bl<inchi\  ai)plie(l  to  silk, 
not  having  been  legally  deposited,  the  owner  has 
an  action  for  unlawful  rivalry  (C  ('.  i:}82)  against 
other  merclumts  who  use  the  same  name.  .laluzot 
z).  Taronnet,  C.  de  Paris,  4  March,  ISOO,  15^1////. 
(U  la  Pro.  97. 

§  1150.  Sirpis. — Former  worl'man. — Defendant 
was  formerly  supei'intendent  of  the  hat  store  of 
Pinaud  &  Amour.  After  having  received  at  the 
Universal  Exposition  a  medal  as  co-o])eratoi',  he 
founded  an  establishment  of  his  own,  using  as  an 
announcement  sign  ''  Au  ler  Avril,  ouverture  de  la 
chappi'llerie  du  Jockey-club  et  dii  sport.  II.  de 
Henne  cooperateur  de  J.  Pinaud  et  Amour,  medaille 
a  I'Exposition  de  1807." 

(On  the  lirst  of  April,  opening  of  tlie  hat  store  of 
the  Jockey  Club  and  Sport.  11.  dellenne,  co-ojier- 
ator  of  J,  Pinaud  &  Amour.  Medal  of  the  Exposi- 
tion of  1807.) 

The  use  of  the  names  J.  Pinaud  &  Amour  was 
enjoinod.  Pinaud  v.  Ilenne,  Trib.  de  Comm.  de  la 
SeiL>e,  10  March,  1809,  15  Ann.  de  la  Pro.  V>1. 

%  1157.  Name.  —  Treaty  IntirHn  England  and 
France. — The  name  of  a  i)erson  is  not  a  trademark 
protected  by  the  law  of  1857,  unless  it  is  used  in  a 
special  form.  The  usurpation  of  a  person's  name 
is  punishable  by  the  law  of  1824. 

2.  Article  12  \)f  the  treaty  of  January  23,  1800, 
between  France  and  England,  is  applicable  both  to 


r 


4;]:) 


FitExcir  Dixisiox- 


f<  t 


I;    ist 


tradcmtiiks  and  to  cotniriorcinl  iiaiiu's  wliicli  dis- 
tiii;j;nisli  the  articles  of  a  nianul'actiuer  or  a  nicr- 
<'liant.  Therefore,  an  Englisli  rnaniifa<'tiirei-  who 
marks  liis  products  with  his  own  name,  or  the 
name  of  liis  predecessois.  Vvhich  lie  has  leually  de- 
posited in  France,  has  the  rigiit  to  an  action  for  in- 
fringement, under  the  law  of  1824,  AVickers  r. 
Frion,  C.  de  Cass,  19  J^Iarch,  1809,  K)  Ann.  dr  la 
Pro.  179,  To  same  effect,  Wickt^rs  i\  Maichand,  (J. 
de  Cass,  27  May,  1870,  Id.  188. 

§  1108.  JS\Uioii(d  codt  of  anus. — A  national 
coat  of  arms  cannot  become  the  trademark  of  a 
manufacturer.  It  may  fojm  part  of  a  design  which 
is  a  good  trademark. 

Plaintiff's  mark  (on  hats)  was  composed  of  the 
English  arms,  surrounded  by  a  ribbon  containing 
the  words  "Christy's  London"  or  '"Chrwstv's 
Best  London."  Defendant  substituted  the  words 
"Quality  Sui^erfine  London,*'  in  place  of  "Chris- 
ty's Best  London,"  lea,ving  the  mark  othemvise 
the  same.  Held  an  infringement.  Christ}^  i".  J)aude, 
Trib.  Civ.  de  la  Seine,  150  June,  1809,  10  Ann.  de  la 
Pro.  31. 

§  1159.  Imitation  of  a  trademark  is  only  action- 
able, when  it  is  of  such  a  nature  as  to  deceive  the 
public.  This  is  so  under  either  article  1382  of  Code 
Civil  or  law  of  18r)7.  Prudhon  i\  Bardou,  C. 
d' Alger,  10  July,  1809,  10  Aun.  de  la  Pro.  282. 

§  1100.  S/f/ns. — Different  ^;/r/cr. — A  business 
sign  cannot  become  a  trademark  until  it  is  legally 
deposited  as  required  by  law  of  ]8r)7. 

2.  The  right  which  results  from  the  priority  of 
use  of  a  sign,  does  not  extend  beyond  the  h^cality 
where  the  use  took  place.  It  bectmies  the  exclu- 
sive property  of  the  first  user  in  each  place. 


H 


FuExcii  Dkcisioxs. 


4:11 


PhiinlifT's  establishment  at  PiU'is  Ix);-;'  tlu^  innu! 
jukI  si.i^n  l^Jiolof/rapJilc  Uil'iox.  Dd't'iulant  after- 
wards r()mmHnc«Ml  business  at  Troycs,  and  cMlicd 
his  establishment,  on  his  si<ii  cS:c.,  by  \\\v  saino 
name.  Injunction  refused.  Jioithaud  t.  Liiiicelot, 
C.  de  Paris,  21  July,  18(51),  16  Ann.  (h,  Ic  Pro. 
200. 

See  next  section. 

^  11(51.  J)c-l'eii(!ant  in  §  IIGO  brou,u-lil  suit  auainst 
the  plaiutilTs  th«'rein,  foi' an  injunction,  to  ivstiaiu 
them  from  usinu,'  tiie  si,i:;n  I^hofof/rapJiir  Ilillos,  \\\ 
Troves, — delV:i(hiut  havinu'  been  the  lii'st  t(t  iis(> 
that  si_ii;n  in  that  place.  Injunction  ^laiih'd. 
Lancelot  t\  Pierthaud,  C.  de  Pai'is,  ri(5  .Mai-cli,  IMTO, 
1(5  .1/^;^  (h'  Id  Pro.  2i)2. 

§   11(52.      Eitihl'iiiH    in    roinmon     use. — Bv  tiik 
CorifT, — Considcrinji;  that  Ilei-old   dcposiK'd    as  a 
tradem^u'k,    :May  24th,   18G7,   at   the  oliice   of   tla^ 
secretaiA'  of  the  Tribunal  of  Commerce  of  the  Spin*', 
51  design,   representing  a  gilded- bcc,  intended  as  a 
stamp  for  the  linings  of  the  hats  which  he  nuule  ; 
that  it  i-esults  from  the  proceedings,  that  at  a  time 
I)receding  the  deposit  of  Ilerold's  mark,  Gerbeau 
was  in  the   habit  of   stam[)ing  his  goods  with  a, 
gilded  bee,  and  that  this  was  known  to   Ileiold. 
Considering,  that  as  end)lem  or  ornament,  tlie  bee 
is  in  common   use,  and  that,  in  adopting  it  as  a 
trademark,  without  attempting,  by  the  aid  of  a  com- 
bination of  distinctive  signs,  to  produce  an  original 
design  susceptible  of  a  propiietary  right,  Ilei'old 
has  misunderstood  the  spirit  of  the  legislation  on 
the  subject,  wlilch  permits  the  use  of    names, — 
and  by  analogy  of  emblems, — in  connnon  use,  as 
trademarks,  on  the  condition  of  producing  them  in 
a  distinguishing  form Judgment  for 


i 

P 
1 

hi 

1:1 


I    % 


I 

1:1 


'^'J 


Mi 


|r.  1> 


4:]2 


ri:E\'rii  Dr.cisroN's. 


tlcfondanf.     IIi'r.')l(l    r.    (jrfn'wnn,    C.    <lt*   l\iiis,  22 
.hmiiaiy,  1870,  10  Ann.  del/.  Pro.  70. 

«J  IIGIJ.  Form  of  product. — t'^iwiuff  maclune. — 
The  si)epial  form  of  a  prodiint  {t'..  ff.,  of  a  sowing 
machine,  aw  it  comes  from  the  factory),  even  tliough 
it  be  new,  and  has  been  regularly  dei)osited,  cannot 
be  a  trademark  by  itself  under  the  law  of  \K)1. 

2.  If  the  usurpation  of  the  form  may  in  certain  cir- 
cumstances give  rise  to  an  action,  it  can  only  be 
under  article  1882  of  the  Civil  Code.  Wilcox  o.  Au- 
bineau,  C.  de  Paris,  23  March,  1870,  17  Ann.  de  la 
Pro.  82. 

See  ^  1078. 

§  1104.  Label. — Defendant,  J.  L.  Martel,  imitated 
the  label  of  the  older  house  of  J.  F.  Martel  &  Co., 
almost  entirely,  but  added  thereto,  "  House  founded 
in  1870,"  which  could  easily  escape  the  notice  of 
l)urchaser.  //<- W,  that  the  act  of  defendant  came 
within  articles  18  and  14  of  law  of  18;')7,  and  was  an 
infringement.  Martell  v.  Martel,  C.  de  Bordeaux, 
7  July,  1871,  18  Ann.  de  la  Pro.  263. 

§  1105.  Confusion. — Borders  of  cloth. — Where 
there  exists  between  two  borders  of  cloth  sufficient 
differences  to  prevent  confusion  on  the  common  and 
ordinary  examination  made  of  goods,  there  is 
neither  infringement  or  unlawful  rivalry.  Dugue 
?).  Dobot-Descoutures,  C.  de  Caen,  11  December, 
1871,  17  Ann.  de  la  Pro.  SOo. 

§  1100.  Imitation. — Color  of  envelope. — Choc- 
olat  Menier. — There  is  a  fraudulent  imitation 
of  a  trademark  or  label,  when  there  is  a  general 
resemblance,  such  as  to  deceive  buyers,  between 
the  true  mark  or  label  and  the  one  in  question. 

2.  Although  the  shape  of  the  product  and  the 
color  of  its  envelope  do  not  form  a  part  of   the 


FuKxcii  DicnsioNs. 


A'.V.] 


lis,  22 


hine. — 
sewing 
tliongh 
cannot 

\inn  cir- 
)nlv  be 
t  (\  Au- 
ti.  de  la 


mitated 
1  &  Co., 
t'oiinded 
lotice  of 
t  came 
waH  an 
udeaux, 

-Where 

ufficient 

ion  and 

Ihere    is 

Duguo 

Icember, 

-Choc- 
litation 
[general 
between 
Ion. 

^nd  the 
of   the 


mark,  their  imitation,  joimMl  to  that  of  flic  lal)i'l, 
constitutes  an  element  in  the  proof  of  fraud iil«Mit 
intent.  Menier  v.  M<Miiiier,  C.  de  liordcaiix,  i:{ 
I)eren»ber,  1871,  18  Ami.  de  la  Pro.  T). 

§   1107.  l7t}it(ti>on.--B('laii.—('hovohil  Mi- 

ulcr. — There  is  a  fraudulent  imitation  of  a  mark 
(a)'t.  8,  law  of  1857),  wlieii  the  i)rin<'ii)al  ehaiactci- 
isti(!S  and  the  general  asjx^ct  of  a  label,  lawfully  <le- 
jtosited,  are  intentionally  leprodueed,  even  tl)ough 
the  name  on  the  label  is  not  the  same,  and  thei'e  be 
dilVeienees  of  detail. 

2.  The  manufacturer  who  has  made  use  of  in- 
fringinu'  labels  foi*  less  than  thre«^  rears,  cannot  in 
vok(j  either  as  a  <lefense  oi'  as  an  excuse  of  uood 
faith,  the  age  of  the  infringing  labels,  and  the  Ijiet. 
that  lie  obtained  them  from  his  [nedecessor,  who 
had  made  use  of  them  for  several  years. 

(Defendants  adopted  the  color  and  shape  (»f  wrap- 
pers of  plaintiff,  the  form  of  his  cakes  of  chocolaie, 
the  same  dispositi(m  of  threa  medals  on  the  label, 
but  sul)stituted  the  word  Niemen  for  Menier). 
Menier  y'.  Merget  &  Kessler,  C.  de  Paris,  IJ  Feb- 
ruary, 1872,  18  Ann.  de  la  Pro.  18. 

§  1168.  Fraudulent  use  of  siphons  hearinrf 
trademarks. — Exchan ye.—  Custom. — Wlienever  si- 
phons containing  water  charged  with  gas  l)ear  the 
trademark  of  a  manufacturer,  anothermanufacturer 
has  no  right  to  use  these  siphons  for  holding  the 
same  kind  of  water,  even  though  it  is  a  custom  for 
dilferent  manufacturers  to  indiscriminately  lill  the 
siphons  returned  by  their  customers  in  exchange  for 
others  (Art.  1882,  C.  C).  Pie  /).  Ponlet,  C.  d' Amiens, 
10  Feb.  1872,  20  Ann.  de  la  Pro.  40. 

§  1169.    Form  of  product,  labels  and  wrappers. — 
Cliocolat  Menier. — There  is  a  fraudulent  imitation 


I 


T:  ~ 

r:i 


FuKvcii  Dkcisio.vs. 


i 


of  a  m;uk,  and  unlawful  livaliy  in  the  fact  of  om- 
ploying  for  like  pioiliiets  the  same  sliajte,  the  same 
method  of  enclosnie,  the  same  roloicd  envelopes, 
and  labels  of  the  same  size,  liavin.i»-  the  same  ap- 
pearance, even  thongh  they  ditt'er  in  the  name  of 
the  manufacturer.  Menier  v.  Louit,  Tril),  (Jiv.  de 
Rouen,  10  March,  1872,  18  Ann.  de  la  Pro.  21. 

§  1170.  Fancy  namf.  —  Boii(/!c  (If  THolle 
(candle  of  the  star),  applied  to  candles,  is  a  good 
trademark.  It  is  an  infringement  of  it  to  use  the 
words  Bougie  de  I'otoile,  on  packages  of  candles, 
althongh  accompanied  by  the  word  hehfc  (Belgic), 
printed  in  small  characters  below. 

2.  The  French  tribunals  have  no  jurisdiction  over 
actions  iov  infringements  of  trademarks  out  of 
France.  De  Milly  i).  Jaussen,  Trib.  Corr. 
d'Eperney,  30  April,  1872,  17  Ann.  de  la  Pro. 
338. 

§  1171.  Use  2>rev)ous  to  deposit. — Prcstrmption 
in  favor  of  depositor. — Infrlnrfement. — (JJiocolat 
Menier. — Abandonment. — Property  in  a  traden)aik 
is  acquired  by  possession  and  nse  in  addition  to  the 
deposit.  It  is  sufficient  to  sustain  an  action  on  a 
trademark,  that  the  last  deposit  is  valid,  without 
reference  to  previous  deposits,  or  to  nse  by  the 
plaintiff  previous  to  any  deposit. 

2.  The  deposit  of  a  mark  raises  a  presumption  of 
priority  in  favor  of  the  depositor.  It  is  for  his 
opponents  to  prove  that  it  was  in  public  nse  pre- 
vious to  the  employment  which  the  depositor  made, 
or  that  it  has  since  entered  into  public  use  by 
abandonment. 

3.  The  abandonment  of  a  deposited  and  used 
mark  is  not  presumed,  and  the  title  to  the  mark 


m 


TriT" 


Fkknch  DKrisioNs. 


4:15 


cnnot  1)!>  injiinvl  by  n(»irl<'ct  to  pnwecnfo  infringe- 
i:!(!!its  (liinng  Ji  long  or  sliort  [HM'iod. 

Si'«'  si  11(57. 

4.  WIk^m  tlici  proprietor  of  a  mark  or  Inhel, 
legjilly  (]('})ositeil.  hvings  an  action  for  tlie  usurpa- 
tion or  imitation  of  his  labels,  as  well  as  the  form 
of  l)is  goods,  the  mode  of  wrapping  them,  aii<l  the 
color  of  the  enveh)pe,  it  is  no  defense  that  s(m»e  of 
tliese  ph'ments  were  previously  in  pul)ll('  use. 
Menier  /".  Buisson,  Trib.  Civ.  de  Lyon,  *}]  July, 
1872,  18  Arnt,  de  la  Pro.  24. 

§  1172.  Name  of  pafcnted  artlrh, — CJiarho)i  de 
Paris. — The  patentee  of  a  conglomerate  coal  (called 
Charbon  de  Paris),  and  his  successors,  after  the  ex- 
piration of  the  patent,  have  an  exclusive  right  to 
the  nau'e  given  by  him  to  the  patented  product, — 
if  it  is  deposited  as  a  trademark,  and  is  not  a  nec's- 
sary  title  to  distinguish  the  product.  ]3i'ousse  r. 
Cressent,  Ti*ib.  de  Comm.  de  la  Seine,  5  December, 
1872,   18  Aim.  de  la  Pro.  248. 

§  1173.  Fraudulent  nste  of  bottles  of  manufac- 
turer of  w(ders. — Whoever  fills  with  Avater,  charged 
gas,  of  his  own  manufacture,  bottles  of  another 
manufacturer,  is  guilty  of  the  fraudulent  use  of  the 
trademark  of  the  other  on  said  bottles,  and  of 
deceit  (art.  7,  §  2,  and  art.  8,  §  2,  law  of  ]8:)7).  That 
the  bottles  used  were  returned  by  his  customers 
instead  of  his  own,  makes  no  difference.  Chapotel 
».  Peron,  Trib.  Corr.  de  la  Seine,  7  February,  1873, 
19  Ann.  de  la  Pro.  388. 

See  §  1108,  1177. 

§  1174.  Form. — Name  of  inoduct. —  Plaintiffs 
were  manufacturers  of  "  Eau  dentifrice  du  docieur 
Pierre "  (Dental  water  of  Dr.  Pierre).  Defend- 
ant (Pierre  Proux),  sold  a  similar  product  in  bottles 


m 


"'"  ' 


4r.c, 


FhKXCII    DI'X'ISION!^. 


4 


'it 

p. 


of  Ihc  siine  shnpe  jukI  si/p,  linger  tln'  iinriH'  '*■  Emf 
d;  ittl/'rirc  dc  Pierre^  DcfeiKlnnt  conlciuled  tlint 
the  style  of  bottles  he  used  was  in  coinmon  use  for 
tile  purpose  ;  that  altli()U<2;h  the  labels  had  the 
same  form,  his  name  Pierre  was  not  i)re('ed(Hl  by 
the  word  doctiur.  Held,  that  nof withstanding  den- 
tal water  was  generally  sold  in  bottles  of  the  same 
shape  as  those  of  defendant,  yet  the  itrodurt  being 
for  the  same  purpose,  of  same  ool(>r,  sold  in  similar 
bottles,  covered  with  labels  v)f  the  same  shape,  ar- 
ranged in  the  same  manner,  and  containing  tlu? 
name  Pierre,  with  the  same  pric^emark  as  that  of 
plaintiff,  confusion  between  them  was  easy.  Defend- 
ant was  ordered  to  adoi)t  the  following  title  "  Eau 
dentifrice  de  Pierre  Proux,  Medecin-deiitiste,  Conrs 
de  rintendence  42,  a  Bordeaux,"  the  word  Proux, 
in  larger  character  than  Pierre.  Choiiet  i\  Pierie 
Proux,  Trib.  de  Comm.  de  la  Seine,  18  February, 
1873,  19  Ann.  de  la  Pro.  18G. 

§  117.").  Infrinr/ement. — Paper  Job  and  Joe. — 
The  word  Joc^  and  the  initials  J.  H.  B  used  on 
like  products  (cigarette  i)aper)  are  an  infringement 
of  the  trademark  Job,  when  they  are  printed  in 
like  characters,  in  the  same  place,  on  a  cover  of  the 
same  size,  and  accompanied  by  analogous  inscrii)- 
lions  and  ornaments  (Articles  7  and  8,  law  of  18.')7). 
Bardou  v.  Berha  and  others,  Trib,  Corr.  de  la 
feeirie,  20  February,  18713,  18  Ann.  de  la  Pro.  C5. 

^  !  17(5,  Fancy  name. — Deceit. — Although  the 
merchant  who  first  madense  of  the  \ya\\\.q  pltosplto- 
r/uano,  may  have  a  exclusive  right  to  the  use  of  it ; 
he  has  no  action  against  another  who  uses  the 
words  iiliospliate-giiano.,  or  guano-phospJioazotv, 
without  remainder  of  mark. 

2.  Although,  at  first,  the  use  of  the  word  gyano.,—- 


FiiK\c!i  Dkcisions. 


•>  4 


led  lliiil 
\  use  U)V 

tMl«Hl  by 
iing  (Umi- 
[he  same 
net  beinjj; 
,1  similar 
iliape,  ar- 
iiviiiL!;  th« 
s  that  of 
,  Defend- 
itlo  "Kau 
ste,  Cours 
I'd  Pi(»nx, 
;  V.  rieire 
February, 

7i<Z  /oc— 
used  on 
im;pment 
printed  in 
)ver  of  the 
us  inscrip- 
w  of  1857). 
)rr.   de  la 
Pro.  05. 
liongb  the 
e  i^hosplio- 
use  of  it ; 
uses    the 
ysplioazot'e, 


tho  nam  '  <»r  a  natural  i)rodiiot, — might  ha\>-  Ixmmi  an 
inl'raction  oH  tiic  law  of  IS(»7  au-ainst  (h'<M'ir,  it  is 
no  longer  so,  in  ]>i>'s«'n<'f>  of  llu*  gtMUMai  nsagi'ol'  so 
naming  all  aitilicial  manures,  which  are  more  oi 
lexs  simihii-  lo  the  natural.  Lawson  r.  Drciiailh', 
C.  de  Paris.  r>()  Maivh,  187:?,  18  A/ui.  r/r  la  Pro.  7-i. 

For  another  oause,  on  same  tiiuhMir.irk,  In  same 
plaint  ill's,  see  Ijjiwson  /'.  Wei,  C  d' Amiens,  '2.\  .lune, 
187l^  bS  Aim.  (h'  hi  Pro.  :57S. 

§1177.  Fraudnh  id  ii.sr  of  li<'r(i>/(ieh's.  -('us- 
tom  irt,  Hninc  tnuli . — ^Vllen  r"('ei»taeles,  siich  as 
bags,  for  natnial  or  manufaetured  ]n(Klu<'ts,  l)ear 
the  trademark  or  name  of  ji  niannfa'  .urer  oi'  niei- 
chant,  another  person  in  the  sann'  tiM<l<M'annol  use 
them  for  liis  own  products,  even  though  in  using 
bags  returned  by  customers,  in  ])lace  of  tlio^s,  s.-nt 
by  him,  he  only  followed  the  gvnerai  pl'actic^'oi■  tlic. 
trade.  Nivet  v.  i\[odenel,  C.  de  Bordeaux,  G  June, 
1873,  19  Ann.  de  la  Pro.  IIJO. 

See  Ml 08,  117:i. 

§  1178.  Fancii  name. —  Translation  of  name 
in  coiiniion  n.se. — Tlie  manufacturer  oi'  merchant 
who  lias  made  the  iirst  use  of  a  particular  name  Tor 
his  products,  and  who  has  made  a  legal  de])osit:  (tf 
it,  has  a  right  of  action  against  its  usurpation  and 
fraudulent  use,  even  though  the  name  be  but  a 
translation  into  a  foreign  language  of  a  nanu!  in 
common  use  (articles  1,  7,  §§  2,  IJJ  an<l  14,  law  of 
ia^)7). 

{Ea.u  divine  [divine  water],  a  name  in  common 
use,  was  translated  into  Spanish,  A(]Ka  <//r<//<(,  and 
deposited  as  a  mark  with  the  secretary  of  the  Tiib- 
nnal  of  Commerce.)  Coudray  v.  Mcmpelas,  C  de 
Cass,  14  November,  1873,  19  Ann.  de  la  Pro.  31. 


4'.'.S 


FiiKxcii  Dix'isroxs. 


■■«■ 


Kii 


'i^ 


See  ^  niG,  Teau  ocarlate,  aucl  ^  114->,  R  i yal  V^ic- 
toiia. 

$^  1171).  I^^inn  name. — A  lirui  name  can  aldiie  be 
made  up  from  the  names  ai  tlie  i)arlueis.  E\oiy 
interested  person  has  the  ri^-ht  to  dc-niand  the  sui»- 
pression  Lorn  a  lirm  name,  of  a  name  which  does 
not  belong  to  any  of  the  partiujis.  Lei)er('he  /'. 
Ricaumont,  0.  de  Boixleaiix,  27  A'ovember,  1873,  IS 
Ann.  de  la  Pro.  391. 

§  118().  Ntune  of  patented  product. — The  name 
given  by  the  inventor,  to  a  i)atented  product,  be- 
comes i)ublic  property  at  tlie  expiration  of  the  pat- 
ent.'- Patents  for  improveuieuts  do  not  preserve 
to  the  owners  of  tlie  improvements,  the  ri;j;ht  to  the 
name  given  in  the  lirst  patent,  and  prevent  it  enter- 
ing into  common  use. 

But,  although  every  one  may  use  the  name,  no 
one  has  the  right  to  use  boxes,  lal)els  and  bill-lieads, 
similar  to  those  of  the  inventor  or  his  successors. 
Michel  B.  Gerstle,  C.  de  Paris,  24  December,  1873, 
19  Ann.  de  la  Pro.  75. 

See  §  1130,  Perles  d)  ether ;  §  1172,  Cliarhon  de 
Paris. 

§  1181.  Product  and  process  in  common  use. — 
Name  of  inventor. — Emblems. — Liebig's  Extract  of 
Meat  Co.,  an  English  corporation,  having  a  j^lace  of 
business  in  Paris,  put  up  an  extract  of  meat,  in- 
vented by  Dr.  Liebig,  and  known  in  commerce  as 
Extractimi  Carnis  Liehig.  They  made  a  legiil  de- 
posit of  their  trademark,  which  contained  that 
phrase  as  an  essential  part.  It  was  also  surrounded 
with  emblems,   such  as  the  head  of  an  ox,  &c. 

*  Such  is  the  general  principle  in  cases  of  generic  or  necessary 
names. 


iiin 


Frkxcii  Decisioxs. 


430 


c  or  necessary 


Defendants  i)ut  np  nn  extract  of  meat  under  same 
name.  The  pi-ocess  and  product  had  been  f^iven  to 
the  public  by  Dr.  Liebii;-.  On  suit  brou,iJ!:ht  to  iv- 
strain  defendants  from  usini^  the  name  Liebiij^  and 
infringing  theii'  mark,  Ilcld^ 

1.  That  tlie  abandonment  of  the  ownei-sljip  or 
use  of  a  i)roper  name  was  not  to  be  presumed.  The 
inventorof  a  product  or  process,  wh(>  has  published 
it  with  the  intention  of  giving  it  to  the  pul)lic,  can- 
not be  i)resumed  by  thai  al(me,  to  have  abaii<h)ne(l 
the  use  of  liis  name  to  all  those  wlio  sliall  prepare 
the  inoduct  after  his  piocess.  Therefore,  lie  pre- 
serves the  right  to  either  entire! v  foibid  the  use  of 
his  name,  or  to  grant  the  exclusive  use  of  it  to  a 
commercial  house. 

2.  In  such  a  case  the  grantees  have  an  actirm  to  en- 
join the  use  of  the  name  of  the  inventor ;  even  its 
use  to  indicate  that  the  i)rodu(^t  had  been  obtained 
by  his  process. 

3.  A  generic  emblem,  such  as  the  head  of  an  ox, 
when  used  as  an  accessory  in  a  label  on  extract  of 
meat,  is  not  by  itself  a  trademark.  The  use  of  the 
same  figure  by  others  does  not  constitute  an  in- 
fringement. Titles,  such  as  Extractuvi  tkuni'S  or 
of  meat,  serving  to  indicate  the  nature  of  a  product 
in  common  use,  are  not  valid  trademarlvs.  Liebig, 
kc.  i\  Coleman,  C.  de  Paris,  12  January,  1874,  It) 
Ann.  de  la  Pro.  83.     See  §  6;")4. 

Aj^peal,  see  §  1192. 

§  1182.  Infringement. — Pho.y^ho-rpmnn. — The 
use  of  the  title  super-phoHphoazot'e  on  a  manure, 
does  not  of  itself  constitute  an  infringement  or 
fraudulent  imitation  of  the  title  pho.sj>/io-!/u<in(), 
used  by  another  merchant  niip((rtot  a  trademark. 
It   must  be  accompanied  by  an   imitation  of    the 


,1! 


m 


w   ^ 


i  if.' 


I* 

■if* 
_  ">■ 


II' 


If  '  ■]; 


•f-lO 


Fkencii  Diccisioxs. 


ju'cessory  element  of  the  nuirk.  Liiwson  n.  Dior, 
C.  de  Caen,  20  Jnnumy,  1874,  20  A?in.  de  la  Pro. 
:ns.     See  j? §1170-1 101. 

§  118;}.  Unlawful  rivalry. — General  appear- 
ance.— Name. — Snccessors. — A  merchant  who  im- 
itates tlie  Hliape  of  the  bottles  and  labels  of  another 
manufactuier  on  products  similar  to  his,  is  guilty 
of  unlawful  rivalry.  This  is  so,  even  though  the 
product  is  in  use,  and  tlie  infrin.L!,-er  has  introduced 
in  his  labels  such  dilferences  as  to  enable  them  to 
be  distinguished  from  the  original  when  compared 
directly  with  them.  It  is  sufficient  that  the  general 
appearance  of  the  bottles  and  labels  was  intended 
and  results  in  the  production  of  confusion  be- 
tween tlie  products. 

2.  Although  the  exjMration  of  the  patent  for  a 
product  gives  eveiy  one  the  right  to  manufacture 
and  sell  the  product,  it  does  not  give  the  right  to 
use  the  name  of  the  inventor  :  esi)ecially  when  the 
product  has  not  ceased  to  be  made  under  the  name 
of  the  inventor  by  his  successors. 

3.  The  successors  of  an  inventor  or  manufacturer 
who  has  manufactured,  sold  and  made  known, 
under  his  own  name,  a  certain  product,  have  a 
right  of  action  against  the  use  of  the  name  by  rivals 
In  their  products,  or  even  in  their  prospectuses. 

4.  The  successors  have  a  right  in  their  own  \)Vo^- 
pectuses  to  warn  the  public  against  the  use  of  the 
stolen  name. 

5.  The  law  of  1857  on  marks,  has  not  abolished 
the  law  of  22  germinal  an.  XL,  forbidding  tiie  use 
of  the  name  of  another  manufacturer  or  of  an- 
other city,  preceded  by  the  words  Fa(joii  de,  ctr. 
Landon  v.  Leroux,  C.  de  Paris,  0  February,  1874, 
19  Ann.  de  la  Pro.  G8. 


inpfP 


FiiKNCii  Decisions. 


n 


T.  Dior, 
la  Pro. 

apptar- 
wlio  iiii- 
i  another 
is  guilty 
?>\v^\i  the 
troduced 
)  theni  to 
:oiu  pared 
e  o'ciieral 
intended 
ision   be- 

^nt  for  a 

lul'acture 

riglit  to 

vlien  the 

he  name 

ifacturer 
known, 
have  a 

^y  rivals 

uses. 

\vn  pros- 

^e  of  the 

bolished 

tiie  use 

of   an- 

^y,  1874, 


?  1 18-1.  fj.sc.  btj  rdalh'rH  of  mark  of  ic/toJe.s((le 
dealer. — A  nierohant  who  buys  at  wholesale  ii;oo(ls, 
for  re-sale  at  retail,— such  as  writing  paper, — has 
the  right  to  reproduce  the  mark  of  the  manufac- 
turer on  goods  sold  l)y  him  in  small  (piantiiies.  The 
court  reasoned  that  this  could  not  be  regarded  as 
a  fraud  ;  and  instead  of  being  an  injury  to  the  man- 
ufacturer, it  had  the  contrary  elFect  of  guarantee- 
ing his  goods  and  increasing  their  sale.  Thomas 
de  La  Rue  o.  Massias,  Trib.  Civ.  de  la  Seine,  7  Feb- 
ruary, 1874,  21  Arui.  de  la  Pro.  IWl.^' 

§  1185.  Infrlnf/enteut. —  Pro<f. —  An  infringe- 
ment or  fraudulent  use  of  a  mark  takes  place  on 
tlie  manufacture  of  the  maik  or  label,  independ- 
ently of  any  use  of  same. 

2.  N^o  law  or  princi[)le  prohil)its  the  owner  of  a 
marli  from  ordering  copies  of  it  through  a  third 
person,  for  the  purpose  of  i)roof  of  infringement. 
Reynal  «.  Wolff,  C.  de  l^iris,  19  March,  1874,  20 
Ann.  de  la  Pro.  40. 

§  1180.  Fancy  name.  —  Public  use  in  for- 
eign counlry. — Tlie  name  of  a  manure,  pUospho- 
guano^  liaving  gone  into  public  use  in  England,  an 
English  manufacturer  of  the  article  cannot  obtain 
a  legal  property  in  it,  as  a  ti'ademark.  by  deposit  in 
France,  under  the  trademark  treaty  between  France 
and  England.  Lawson  v.  Dechaille,  C.  deCass.,  21 
and  23  March,  1874,  19  Aiui.  de  la  Pro.  153. 

§  1187.  Infringement. — Fancj/  name. — Plaintiff 
was  owner  of  the  trademark  Liqueur  du  Mont- 
Carniel.     Defendant  manufactured  a  liquor  which 


*  Tlic  editor  of  The  AnnnlcH  takes  exception  to  this  decision, 
sayiniT  that  fraud  should  be  too  easy,  if  the  simple  purchase  of 
divisible  ^^oods  would  permit  the  retailer  to  multii)ly  the  trade- 
murk  indeliaitcly. 


>i 


ITT 


Ho-    ^ 


4a: 


10 


French  Decisions. 


!tf* 


i 


■  I ,' 


m 


m 


lie  called  Carmellne,  liqueur  de  Xoire-Dmnr  rhi 
Moid-Car mel.  The  bottles  containing  i)laintilfs 
liquor  were  of  an  antique  pattern,  wheieas  those  of 
defendant  were  of  a  modern  form.  Held,  that  there 
was  no  infringement,  the  principal  title  of  defend- 
ant's i)roduct  being  Canii'dliu\  that  of  i)laintiff, 
liqueur  du  Mord-Caniicl ;  and  (otherwise  no  confu- 
sion being  possible  between  the  two  marks  from 
the  ai)pearance  of  the  whole  or  of  jiarts.  Faivre 
T.  Boulan,  C.  de  Paris,  4  June,  1874,  19  Ann.,  de  la 
Pro.  378. 

§  1188.  Prior  use. — Infringement. — In  opposi- 
tion to  the  defense  of  use  of  a  mark  piior  to  its 
deposit,  the  depositor  may  prove  that  he  was  its  in- 
ventor ;  and  that,  if  it  was  used  by  third  persons 
before  the  deposit,  it  was  by  his  authorization  and 
without  an  abandonment  of  his  rights. 

2.  He  has  an  action  against  an  infringer,  after  the 
legal  deposit,  even  though  it  be  proved  that  the  use 
of  the  mark  by  the  infringer  ccmimenced  before  the 
deposit,  and  was  only  continued  afterwards.  Guil- 
lou  0.  Derossy,  C.  de  Paris,  20  Nov-ember,  1873,  C. 
de  Cass.,  20  June,  1874,  19  Ann.  de  la  Pro.  321. 

See  §  1117. 

§  1189.  LiJce  names. — JMoet  &  Cliandon. — Moet 
&  Co. — Injunction. — Although  one's  family  name 
is  his  property,  he  has  no  right  to  make  it  an  instru- 
ment of  unlaw^iul  rivalry. 

2.  A  merchant  or  manufacturer,  who,  being  pre- 
viously a  complete  stranger  to  a  certain  industry, 
is  called  into  a  new  firm,  because  of  the  similarity 
of  his  name  with  that  of  an  old  house,  may  be  per- 
petually enjoined  against  the  use  of  his  name  in 
that  industry. 

3.  Plaintiffs    were    the    old    house    of    Moet  & 


liilfp 


French  Decisioxs. 


443 


Cltandon,  dating  from  1807.  The  firm  Moet  & 
Co.  was  formed  l)y  Leblanc,  a  biewer  of  Reims, 
who  bronglit  one  Jean  Fredeiic  Moet.  a  (rleik  in  a 
commercial  house  at  Mai'Stricht,  Holland,  to  Reims, 
for  the  purpose.  This  Moet  had  no  knowledge  of 
the  manufacture  of  champagne  wines,  and  only 
came  to  Reims  to  prolit  by  the  use  of  liis  name. 
Defendants  took  every  precaution  ag-ainst  liabil- 
ity to  an  action  by  Moet  &  Chandon,  wIjo  had  u 
place  of  business  at  Epernay,  by  ostablisirujg  tliem- 
selv'es  at  Reims,  by  putting  at  the  head  of  their 
bills,  letters  and  shipping  receipts,  '•''  House  founded 
in  1872,"  and  by  reproducing  it  on  the  bottom  of 
their  corks,  where  the  name  of  the  manufacturer  is 
usually  placed  in  the  trade  of  champagne  wines  ; 
the  two  dots  over  the  e  weie  also  omitted  from  the 
name  of  Moet.  These  differences  were  held  not 
sufficient  to  prevent  the  deception  of  tlu'  public. 
Injunction  and  damages.  (Art.  ];J82,  Civil  Code.) 
Moot  et  Chandon  o.  Moet  et  Co.,  C.  de  Paris,  31 
July,  1874,  \QAnn.  de  la  Pro.  311. 

§  1190.  Fancy  name  of  patented  article. — Form, 
of  mark. — Fraudulent  imitation. — Plaintiff  depos- 
ited as  his  mark  for  umbrella  frames,  Parar/on  de 
Fox.,  stamped  on  a  little  coppered  plate  attached  to 
one  of  the  ribs.  Defendant  Meurgey,  used  the 
words  Pararfon  M  et  C\  jDlaced  in  same  manner. 
Held.,  a  fraudulent  imitation  under  article  8,  law  of 
1857. 

2.  Defendant  Teste  adopted  the  form  and  posi- 
tion of  the  plate,  but  stamped  his  own  name  on  it. 
Held,  no  infringement. 

3.  The  frames  of  plaintiff  were  patented,  but  the 
patent  had  expired.  Held.,  that  it  makes  no  differ- 
ence  that  the  product  to  Avhich  a  fancy  name  is 


'11 


/  '  ( 


French  Decisions, 


9 


*<"  f 


,i,^iven,  is  patented,  if  it  was  not  patented  under  tliat 
name,  and  the  name  was  not  independently^  of  the 
jialent,  generic  ;  also  that  the  pul>lic  h:ive  applied 
the  name  to  all  products  of  a  similar  kind.  This, 
being  independent  of  the  manufacturer,  cannot 
cause  him  to  lose  h^';  mark.  Fox  v.  Meurgey  and 
Teste,  C,  de  Paris,  19  August,  1874,  19  Anu.  de  la 
Pro.  3i.^7. 

Same  case  on  appeal,  §  llO.li, 

§  1191,  Fancy  name. — Infringement. — Pliosplio- 
(juario. — When  a  trader  has  deposited  a  trademark 
which  is  composed  of  a  fancy  name,  phos])]i.o-f/iiano 
and  accessory  signs  and  emblems,  the  whole  form- 
ing the  trademark,  the  Judges  of  the  fart  may  de- 
cide that  the  depositor  did  not  intend  tr  reserve  to 
himself  tlie  right  to  the  name  phospho-guano  dis- 
connected from  the  accessory  signs.  In  that  case 
the  isolated  use  of  the  name  is  not  an  infringement 
(Law  of  1857),  Gallet-Lefebvre  o.  Goubean,  C,  de 
Cass,,  .JO  December,  1874,  20  Ann.  de  la  Pro.  314, 

See  §    1182. 

§  1192.  Name. —  Use  hy  imhlic. — Liehig. — By 
THE  CouiiT, — As  it  results  from  the  proofs  of  the 
judgment  attacked,  that  the  deposit  made  by  the 
company  is  valid  and  regular  ;  that  the  use  of  the 
name  of  Liebig  in  England,  as  a  necessary  title  of 
the  131'oduct  to  which  it  was  given,  is  not  p'-o-i-T-i; 
and  if  a  commission  taken  there,  estabjisl  -hiii: 
there  was  prepared  under  the  name  of  I;;  »>;  •  aii 
extract  of  meat,  in  certain  prescription  ico;  of 
apothecaries,  these  preparations  were  isolated,  in 
pharmaceutical  doses,  and  did  not  have  the  publicity 
requisite  to  give  Liebig  such  notice  as  to  require  him 
to  protect  his  name.  Objection  of  contrary  decision 
in  English  court  of  chancery,  November  19,  1867, 


FiiKxcii  Dkcisioxs, 


415 


an 


overruled.  Ap[)eal  dismissed.  Demot  (\  Society 
dos  licritiers  Liebig,  C.  de  Cass.,  0  January,  lyTH, 
20  Ajih.  de  la  Pro.  11. 0. 

See  §  1181. 

§  1103.  Name  of  Inventor. — Tlie  name  of  tli<; 
inventor  does  not  become  public  property  on  the 
exi)iratiou  of  his  patent,  unless  the  same  is  neces- 
sary to  describe  the  thing  invented.  In  the  case  of 
Jouvin,  who  had  taken  a  patent  for  an  insti-ument 
and  process  for  cutting  out  ki<l  gloves,  and  had 
adopted  his  own  name  as  a  trademark,  it  became 
the  property  of  his  heii's  and  representatives  after 
his  death,  and  its  usurpation  gives  rise  to  an  action 
for  damages  and  an  injunction. 

2,  AV^lien,  on  account  of  the  dissolution  and 
change  of  lirms,  there  remain  two  or  uiore  wlio  have 
the  right  to  use  the  same  name  in  the  names  of  their 
respective  lirms,  it  belongs  to  the  court  to  prescribe 
the  measures  that  it  deems  necessary  to  pr(nent 
confusion ;  and  especially  such  as  to  leave  to  the 
heirs  the  benefit  of  the  reputation  of  their  ancestor. 
It  may  enjoin  a  new  firm,  either  from  using  the 
name  of  the  inventor  alone,  without  a  distin- 
guishing title,  or  with  the  word  i)atented  joined 
to  it,  although  the  new  society  may  have  taken  a 
new  patent.  Veuve  Xavier  Jouvin  v.  Jouvin, 
Doyon  et  Cie.,  C.  de  Paris,  2o  January,  187."),  20 
Ann.  de  la  Pro.  237. 

§  1194.  A  stripe  on  cloth,  composed  of  one  or 
more  threads  of  different  colors,  woven  either  at 
the  border  or  end,  and  new  by  jiosition  or  arrange- 
ment, is  a  good  trademark.  (Article  1,  law  of  18.')7.) 

2.  The  burden  of  proof  is  on  the  defendant,  who 
claims  that  the  mark  legally  deposited  was  in  i)ub- 
lic  use  prior  to  the  dejjosit. 


rr^ 


4-'!  a 


FijKXcii  Bkcisioxs. 


IM 


(Mark  deposited  was  a  groon  and  yellow sfri porn 
elastic  webs  for  shoes.)  Criillieron-Polirard  v. 
Gadobert,  C.  de  Paris,  27  January,  187o,  21  Ann. 
de  la  Pro.  02. 

See  ?  1118. 

§  110.').  Co/nhf  nation  of  elements  in  ^common, 
use. — Fraudulent  imitation. — Fancy  name. — The 
union  of  different  elements  in  common  use  may 
constitute  a  trademark,  when  such  union  is  of  a 
kind  to  distinj^uish  the  product  in  a  distinct  and 
characteristic  manner. 

2.  There  is  a  fraudulent  imitation  of  a  trademark 
under  article  8,  law  of  1857,  when  the  imitation  is 
of  such  a  kind  as  to  deceive  purchasers  in  regard 
to  the  origin  of  the  product. 

3.  It  is  for  the  judges  of  the  fact  to  decide  whether 
the  imitation  is  of  the  kind  above  described ;  in 
consequence,  the  decree  escapes  the  censure  of  the 
court  of  cassation,  which  condemns  a  defendant  for 
a  fraudulent  imitation  of  a  trademark  on  a  finding 
of  fact,  "That  the  imitation  does  not  result  solely 
from  the  use  of  the  word  Paragon^  but  as  well  from 
the  inscription  in  relief  on  a  coppered  tablet,  in 
every  respect  like  that  of  plaintiff,  and  placed  on 
the  same  part  of  the  umbrella  frame,  in  such  a 
manner  as  to  differ  only  by  the  initials,  which 
would  only  be  noticed  by  a  very  attentive  ob- 
server." Fox  xi.  Meurgey  and  Teste,  C.  de  Cass.,  6 
February,  1875,  20  Ann.  de  la  Pro.  213. 

See  §  1190. 

§  1196.  Fancy  name. — Expiration  of  patent.  — 
General  use, — CharJjon  de  Paris. — The  manufac- 
turer who  has  given  to  his  products  a  fancy  name, 
cannot  maintain  an  action  for  its  usurpation  when 
he  has  abandoned  it  to  public  iise,^e.  g.^  where  a 


^mifrw 


Pre.vcit  Decisions, 


447 


title,  siicli  as  Clmrhoii  do,  Parh,  j^iven  by  an  in- 
ventor to  a  coni^loMierate  coal  that  lie  has  patenf«'(l. 
has  h(M'(nn»i  by  long  nse,  and  withont  opposition  o:; 
his  part,  the  ,i^eneral  name  for  that  kind  of  pro- 
duct, Ik;  cannot  by  a  tardy  deposit  of  the  name  re 
gain  its  exclnsive  property.  Bronsse  o.  Cressent. 
C.  de  Cass.,  8  February,  187."),  22  Ann.  dr  la  Fro.  01. 

§  1197.  Nanhc.—  U-se  ht/  slranr/er. — Defendants 
were  dealers  in  ready-made  clothing,  in  Paris,  and 
put  on  sale  and  advertised  extensively  an  (overcoat 
of  infericn-  cloth,  which  they  called  the  Monldf/nar. 
They  advertised  in  the  Fif/aro,  that  all  the  i)awn 
shops  of  Paris  were  idled  with  them  as  security 
for  loans  oi  2.1  francs,  when  the  garment  cost 
but  11).  PlaintilTs  Montagnac,  were  manufacturers 
of  cloth  at  Sedan,  of  an  honorable  reputation.  They 
complained  that  the  use  of  their  name  in  such  a 
manner  was  prejudicial  to  them,  by  causing  peoi)le 
to  believe  that  the  common  cloth  of  these  coats 
came  from  their  factory. 

Defendants  were  enjoined  the  nse  of  the  name 
Montagnac.  Damages  l,000f.  Montagnac  ii.  Ilal- 
phen,  Trib.  Civ.  de  la  Seine,  12  February,  1875,  20 
Ann.  de  la  Pro.  9o. 

§  1 198.  Name. — Luh'ni. — ^ale  of  use  of  name. — 
Plaintiffs  were  successors  of  one  Lubin,  whose  per- 
fumeries and  toilet  articles  had  obtained  a  great 
reputation.  Defendants  manufactured  articles  for 
the  toilet,  such  as  cold-cream,  which  were  put  up 
in  pots,  &c.,  bearing  labels  indicating  the  nature 
of  the  contents,  and  including  the  name  Jean  Lubin, 
printed  in  large  characters.  The  name  was  jdso 
printed  in  the  form  of  a  signature  on  a  stamp 
attached  like  an  English  postage  stamp.  On  a 
sliX)  of  paper  surrounding  the  package  was  printed. 


— ''^i'"  ■  ■" 


IS 


448 


French  Dp:cisioxs. 


li  w 


'•  Kxiict  on  each  product  the  signature  J^an 
LiihiiL."  Defendants  justilied  tlie  nseol*  this  name, 
uliich  was  not  their  (nvn,  by  an  agreement  with 
one  .Jean  Lnbin  of  Cahors,  which  granted  to  them 
certain  receipts  (jf  his  invention  and  the  right  to 
nse  his  name. 

Iklcl.,  that  a  proper  name  is  not  an  article  of  com- 
merce, and  is  only  property  so  far  as  it  is  con- 
nected with  a  pre-existing  business  of  which  it  has 
become  the  title  by  the  use  which  has  been  made 
of  it.  Defendants  were  enjoined  against  use  oi  name 
Lubin.  Damages.  Prot  c.  Ilerve,  Trib.  de  Comm. 
de  Lyon,  27  April,  IST*^,  20  Ann.  da  la  Fro.  108. 

§  1199.  Fancy  name. —  Veloxtinc. — The  fancy 
name  Veloutlne  ai)i)lied  to  a  mixture  of  lice  i>owder 
and  bismuth,  is  a  trademark  which,  when  legally 
deposited,  gives  a  right  of  action  against  tliose  who 
make  use  of  it  without  permission  on  siiuiljir  i)ro- 
ductions.  Fay  o.  Durand,  Trib.  Civil  de  la  Seine, 
8  May,  1875,  20  Ann.  do  la  Pro.  24;"). 

§  1200.  Name. — Inventor  of  paicnied,  machine. 
—  Hotce  sewing  machine.  —  Franco  -  American 
Treat?/. — Property  in  a  proper  name  is  imprescrip- 
tible, and  its  abandonment  is  not  presumed.  It  is 
the  same  in  case  of  the  name  of  the  iuAeiitor  of  a 
patented  machine,  even  though  his  parent  has  ex- 
pired, and,  in  common  language,  the  |)arented 
machine  is  called  by  his  name.  This  usage, 
though  constant,  cannot  rob  an  inventor  of  his 
name,  especially  if  he  has  not  ceased  to  manufacture 
and  sell  machines  of  the  same  kind. 

2.  He  is  an  infringer  of  a  name  under  law  of 
1824,  who  puts  it  on  a  machine  not  made  by  him- 
self, although  he  places  before  it  the  words  system 
of  or  adds  his  own  name. 


Fi:i:x(ii  DKCii^roxs. 


4\) 


Thr  tie;itv  of  1S(50  bctwcon  the  I'liittMl  States 
ami  Fi'ancc,  and  that  of  ISfJO  hetween  KM^laiul  and 
FraiK'o,  stipidatin^'  reciprocal  ^iiuranries  of  trade- 
marks, incliKh's  the  mimes  of  business  men  \vhi<'h 
distinguish  tlieir  goods.  IIowo  Machine  do.  r. 
Maquaire,  C.  de  Paris,  JS  Novendiei-.  IST."),  :iO  Ann . 
de  la  Pro.  !C);i.     Case  be'.ow  re])orted  hi.  '.V.M. 

%  1201.  Inffhujcuif'iit.  —  Faiii  (If  toilctir  fl>  Lnhln 
is  infringed  l)y  the  title  Eaii,  de  toileUc  <ni.r  ,''-->i}(.s- 
et  fl.enr.'i  de  Lupin.,  or  Eau  <lf  loihtle  dn  Lilxia 
(toilet  water,  .  .  .  ),  used  on  Uie  labels  of  the  same 
kind  of  product  when,  by  the  arrangement  of  the 
words,  and  resemblances  of  the  bottles  and  labels, 
it  is  ax)parent  that  there  was  an  intention  to  estab- 
lish a  confusion  between  the  products. 

2.  It  makes  no  difference  that  th«;  infringing 
trademark  was  deposited  at  a  date  prior  tf>  that  in- 
fringed. Prot  V.  Cabridens,  Trib.  Civ.  de  la  ^-^eine, 
22  November  and  10  December,  J 875,  20  Ann.  de 
la  Pro.  309. 

§  1202.  Fraudulent  im'tation. — Eau.  de  melisse. 
— Plaintiff's  label  (legally  deposited)  was  i>rinted 
in  black  on  a  white  ground,  Eau  de.s  Carmes 
d^chausses  de  la  rue  de  Vamfirard,  de  Ihn/er.  Rue 
Taranne.,  No.  14,  a  Paris.  Blown  on  his  bottles 
were  the  words  Eau  des  (Jar men.,  Bovkk,  rue 
Taranrte.,  No.  14.  Defendant  Roger  Boyer  |)nt  up 
eau  de  melisse  in  bottles  on  which  weie  blown  p](tu 
de  melisse  de  Boyer.,  pharntarien  d  Paris.  Ilis 
labels  were  printed  in  black,  on  a  white  ground, 
Eau  de  melisse  des  Cannes  ])ieparee  par  R.  Roi/er., 
Rue  Taranne.,  No.  0,  The  boxes  in  whicli  tlie 
bottles  were  i)ut  up,  were  imitated.  Defendant 
claimed  that  there  were  sufficient  differences  be- 
tween tlie  products  to  distinguish  them. 
29 


y.  I 


450 


FiJKxcii  T)i:c'isioxs. 


f  i 


,'  V 


V  'i 


■/.« 


ft 


//f7r/,  that  it  is  suflicicnt  to  coiiHtitiitH  ji  fiaiidii- 
loiit  imitation  of  a  murk  iiiidor  artirlo  8  of  law  ol' 
18.-t7,  tliat  tlie  i^Hiieral  aspect  of  tlio  infrini;;iiig'  mark 
!)»'  tlu;  samo,  and  that  (h'signcd  rcscmbhinccs  of 
('(M'tain  details,  siicli  as  tho  form,  color  and  airanyo- 
ment  of  hibels,  stamps  and  seals,  be  of  snch  a 
kind  as  to  deceive  inattentive  or  inexperienced 
bnyers. 

2.  In  snch  a  case  the  frandulent  intent  may  be 
estal)lished  not  only  by  resemblances  of  the  labels 
and  other  distinctive  si^ns  deposit(>d,  but  also  by 
a(;cessory  facets,  such  as  the  shape  of  the  recepl:icles, 
the  method  of  packin.u",  Arc  which  do  not  constitute 
a  trademarlv  in  themselves.  When  a  meichant  1ms 
made  liimself  known  in  a  certain  industry,  or  in 
the  manufacture  of  certain  ^'oods,  I'ival  nn'rchanls 
of  the  sanu'  name  should,  more  than  any  others, 
avoid  resemblances  of  marks  of  snch  a  kind  as  to 
lead  to  confusion.  A.  Boyer  i\  11.  Boyei-,  C.  de 
Paris,  27  November,  187;"),  21  Ajin.  de  la  Fro.  20. 

See  §§  1140,  1150. 

§  1203.  A.  Boyer,  mentioned  in  section  1202, 
bronght  suit  against  Cassius  Boyer  and  Bate],  who, 
in  selling  Eau  de  melisse,  used  a  square  lal)e]  printed 
in  black  on  a  white  ground,  J^a/i  de  nicU.SKc  dcs- 
Cannes  i^a hit- Jacques^  C.  Bot/er,  Rxe  Brezln.,  jS^o. 
33,  Paris.  The  name  C.  Boyer  was  printed  in  the 
same  manner  as  that  of  plaintiff,  but  at  the  left  of 
the  label  instead  of  the  right.  The  type  employed 
Avas  different. 

Held,  that  there  is  a  fraudulent  imitation  of  a 
mark,  the  moment  that  the  labels  and  stamps  em- 
ployed present  resemblances  of  snch  a  kind  as  to 
deceive  any  number  of  buyei-s,  even  though  differ- 
ences had  been  introduced  and  the  name  raodilied. 


11  Ji 


■"^ 


FlMCXClI   PlX'IsroNS. 


-i:.i 


A.  Pioycr  /".  C'lssiiis  Pxiyyi",  Trih.  (Unr.  dc  ]:i  Seine. 
'.)  December,  IST."),  "il  *\i/n.  f/c /(f  l^m.  -2:^. 

^  ]:?()4.  Trr((ft/  hctirctii  FriDn-c anfl  Kii'jJdinl. — 
J'^r<iii(hth'nl  imlldlioii. — Article  1:2  ol'  the  ticntv  <»f 

« 

cotnmerce  of  January  '2''\  ISdO.  between  l-'raiice  and 
England,  includes  names  and  initials,  as  well  as 
other  marks;  and  tiilows  Kn,ulislim(>n  who  have 
lei^ally  deposited  tlwMr  marks  in  l""'iance.  to  1)rin<j^ 
actions  for  fraudulent  imitation  of  the  same  as 
well  as  for  iiifrinL,'ement  by  ;i  sei-vile  copy. 

'2.  There  is  a  fraudulent  imitation  of  atradem.'uk 
under  artich'  S  of  law  of  IS,")?,  when  the  resem- 
blances and  i^eneral  api)ea ranee  of  the  whoh'  infrijii:- 
in^"  mark  are  intentionally  of  sucli  a  kind  as  to  es- 
tablisli  confusion  l)etwe(Mi  the  two  marks,  even 
thou2;li  a  careful  coni])arison  of  the  two  would  brinir 
to  lio-ht  sufliciently  strikin^i;-  dillerences,  such  as 
different  names  or  initials — a  si)hinx  in  })la<e  (»f  a 
lion.  Lister  /'.  Chardin,  Trib.  Con*,  de  la  Seine,  'JS 
December,  1875,  21  Ann.  dc  hi  Pro.  7'2. 

g  l!2().").  Infr'nujcmcnt. — PriittiiKj  hihchs. — The 
manufacture  of  ti-ademarks  is  an  infrinii'ement,  in- 
dependent of  any  use  of  same,  or  of  any  injury  to 
the  owner.  It  is  suflicient  tlmt  injury  is  possilde. 
Li thogi'a pliers  are  guilty  of  infring<Muent,  who  have 
made  and  delivered  infringing  labels,  with  bills 
shoAving  that  they  believed  they  were  working  for 
jiersons  not  the  ownei's,  although  in  reality  the  order 
had  been  given  bv  the  directicm  of  the  lattei'  for  the 
purpose  of  proving  the  inf ringemen  t.  This  is  not  so, 
if  it  is  proved  that  the  ownei's  of  the  mark  weie 
guilty  of  any  manopuvres  toentrap  the  conlidenceand 
good  faith  of  the  lithographers.  Reynal  r.  AVolff, 
(J.  de  Cass.,  I/?  January,  187G,  21  Ann.  dc  la  Pro.  T). 

See  §  1151. 


452 


FiiExcii  Decisions. 


II 


I 


§  1 300.  Limitation ofacti&nfor infringement. — 
^^ Exact  the  signature."— Where  si  manufactui-er 
lias  manifested  by  several  successive  dej^sits.  and 
by  suits  against  infringers,  tlie  intention  to  pre- 
serve the  ownersliip  of  his  ti-ademark,  it  is  no 
defense  to  an  acti(jn  for  infringement,  that  he  has 
ni/^glected  to  bring  suit  against  other  infringers  for 
a  greater  or  less  time. 

2.  The  use  of  the  words,  Exact  the  signature, 
.  .  on  the  labels  of  a  younger  house,  is  an  evi- 
dence of  bad  faith,  to  be  considered  in  judging  of 
a  fraudulent  imitation.  Boyer  v.  Lemit,  C.  de 
Paris,  15  January,  1870,  21  Ann.  de  la  Pro.  27. 

§  1207.  Name,  when  trademarJi:. —  Use  after  ex- 
piration of  patent. — ^'•Dit.''"' — Names  of  persons, 
even  though  deposited,  are  not  good  trademarks, 
unless  they  are  used  in  a  distinctive  form.  The  un- 
authorized use  on  a  machine  of  the  name  of  the 
inventor,  unaccomi)anied  by  distinguishing  acces- 
sories, is  not  an  infringement  under  articles  7  and  8 
of  law  of  18i")7,  but  may  be  a  usurpation  of  name 
under  law  of  1824,  and  article  423  of  Penal  Code. 

2.  The  expiration  of  a  patent  does  not  give  the  use 
of  the  name  of  the  inventor  to  the  pid)lic,  unless 
he  has  voluntarily  abandoned  it,  or  by  his  own  act 
the  patented  object  cannot  be  otherwise  designated. 
In  the  latter  case,  third  parties  who  manufacture 
the  same  or  analogous  j)roducts  should  avoid  every 
use  of  the  name  tending  to  deceive  purchasers  as 
to  the  origin  of  the  articles  made  by  them. 

3.  The  manufacturer  is  guilty  of  a  violation  of  the 
law  of  1824,  who  x^laces  the  name  of  the  inventor 
on  similar  machines  preceded  by  the  word  dit 
(called),  in  small  letters,  concealed  among  accom- 
panying designs  in  such  a  manner  as  to  show  the 


.'I 

If       K 
It    ^ 


TfT 


W  ■    '[ 


FitKxtii  Decisions. 


4:>-^ 


pement. — 
nufaoturer 
)osits.  nnd 
)n  to  pre- 
.,  it  is  no 
liat  he  has 
'ringers  for 

signature, 
!,  is  an  evi- 
judging  of 
mit,    C.    de 
Fro.  '?7. 
's6  after  ex- 
of  persons, 
trademarks, 
j\.     The  un- 
ame  of  tlie 
ling  acces- 
cles  7  and  8 
on  of  name 
snal  Code, 
o-ive  the  use 
)lic,  unless 
lis  own  act 
designated, 
nanufacture 
avoid  every 
irchasers  as 
em. 

ation  of  the 
he  inventor 
le  word  dii 
long  accom- 
to  show  tlie 


name  (mly,  and  to  prodiKu;  a  confusion  l)etu>HMi  \\\{\ 
pi'odiicts.  Rogier  /?.  Frai)piei-,  C  d(3  l*aiis.  {{) 
March,  187G,  21  Ann.  de  la  Pro.  ()."5. 

§  1208.  Master  anxl  servant. — Foruiatio)i  of 
neio  estahlisknicnt. — An  employee  who  i'ouiids  a 
new  commercial  house,  has  no  right  to  meution  the 
name  of  his  former  employer  in  his  circulars.  Use 
of  name  enjoined.  Courtois  V).  Ilolzmann,  Trib,  de 
Comm.  de  la  Seine,  30  March,  1876,  21  Ann.  de  la 
Pro.  111. 

See  g  1131. 

§  1209.  Name  of  inventor. —  Use  of\  after  expira- 
tion, of  patent. — Howe. — Bijou. — An  English  com- 
I)any  which  has  obtained  from  an  American  company 
the  exclusive  right  to  make  and  sell  in  Europe  a 
certain  kind  of  sewing  machine,  and  to  us(>  tli<^  iianic 
and  trademarks  of  the  American  invenloi-.  has  a 
right  of  action  in  France  against  infringers  ol'  said 
name  and  marks,  by  virtue  of  the  treaties  of  18(iO 
and  18G2  with  England. 

2.  The  inventor  of  a  patented  machine  and  his 
assignors  or  heirs  preserve  the  exclusive  right  to 
use  his  na  3  after  the  expiration  of  the  patent, 
unless  it  is  proved  that  he  has  v(»lunt;jri]y  aban- 
doned it  to  the  public. 

3.  Although  any  one  may  manufacture  the 
machine  after  the  expiration  of  the  patent,  he  may 
not  add  to  it  the  name  of  the  inventor,  either  alone 
or  with  any  qualification, — e.  (/.,  Bijou ^  thus,  Ilowe- 
Bij'on.  Howe  Machine  Co.  1".  ]3rion,  C.  de  Paiis, 
20  May,  187U,  21  Ann.  de  la  Pro.  170. 

See  $^  1214. 

§  1210.  False  designation  of  j)taee  of  manu- 
facture.— The  manufacturer  is  guilty  of  unlawful 
rivalry  who  gives  to  his  products  the  name  of  '<*> 


w™ 


m' 


i^: 


'I 
'I 

W 


li    1^ 


4.")4 


Frexcii  Decisions. 


])l!U'e  different  from  that  of  production,  wlieii  (lu'i'c 
exists  in  the  i)la{'e  whose  name  is  talcen,  a  inauu- 
fa('tiir«M"  wliose  products  liave  jdrc^ady  acquired  a 
celebrity  under  its  name.  In  such  a  case  the  lirst 
occupant  lias  a  right  of  action  for  the  supjiression 
of  the  name  which  may  cause  confusion,  tis  well 
fi'om  the  letter-heads  as  ficmi  the  trademarks  of  liis 
rival.  Lonquety  v.  Famchon,  C.  de  Douai,  0  July, 
1870,  21  Ann.  de  la  Pro.  317. 

See  jJ  1143. 

§  1211.  Frauduh'id  hn ilaiion .—Vhimt'ifT h  de- 
posited trademark  consisted  of  a  square  label, 
reading  as  follows : 

USIXES    DE    WYGMAEL 

E.  rp:my  ET  C« 

AMIDON     ROYAL    DE     lUZ 

MEDAILLE   jVoU 

EXPOSITION — Paris,  1807 — universelle 

LOUVAIN 

These  words  were  surrounded  bv  a  frame-work 

of  medals,  obtained  at  various  exhibitions. 

Defendants  adopted    a    new  label    in  1875,   as 

follows : 

amidoxnekie 

S*  REMY  O^'^ 
AM  1 1)  ON    1)E    RIZ 

MEDAILLE    d'  A  UGEXT 

EXPOSiTiox — Paris,  1807 — i'mverselle 

MAISOX    FOXDEE    EX     1822 

It  was  printed  like  plaintilfs  in  white  cm  a  blue 
ground;  the  fiame work  was  of  medals  nearly  the 
same  as  j^laintilf  s  ;  the  shape  scpiare. 

By  the  Couut. — Although  neither  the  blue 
color  of  the  paper,  nor  the  white  color  of  the  letters, 
nor  the  square  form  of  tlie  label,  wc:e  ])roperty  of 
plaintiffs,  they  having  been  in  universal  use  for  a 


FiiKxrn  Becisioxs. 


4r)n 


1.1,1  ;•  fi.ao  to  de.si^ii;iuito  these  pi-odiicts,  y<'t  ronsider- 
inix  that  in  the  mark  of  the  plaintilf,  the  iianie  Heuiy 
vi  Ce.  I'onns  the  essential  and  chai-acteiistic  siuii.  as 
well  because  it  is  the  name  of  the  mannfactiircis  of 
the  Amidon  as  because  it  is  jninted  at  tlie  head  of 
the  label  in  large  characters,  and  it  is  the  name 
which  best  distinguishes  the  merchandise  to  ])nr- 
chasers.  Considering  that  defendant,  instead  of 
announcing  liis  goods  in  his  labels  by  his 
name,  concealed  the  same  completely,  and  searched 
for  a  means  of  inscribing  the  name  K<Mny  in 
the  same  surroundings  as  the  plaintiffs, — i.e., 
at  the  bead  of  liis  mark  in  laige  chaiacters  ; 
that,  for  the  purpose  of  giving  himself  the  ap- 
pearan(;e  of  right,  in  1875  he  gave  the  name  of 
Saint-Hem V  to  his  mill,  situated  in  the  com- 
mune  of  Agnetz,  arrcmdissement  of  Clermont 
(Oise),  when  previously  it  had  borne  the  name 
of  MouUn  Lessler ;  that  it  is  certain  that  the  arbi- 
trary change  of  name  had  no  other  object  than  the 
right  to  inscribe  the  name  Hemy  on  his  mark,  and 
confound  it  with  that  of  plaintiffs  ;  that  the  imita- 
tion and  fraud  is  also  sliown  bv  the  arrang(;ment  of 
the  medals,  the  ribbor.s  and  framewoik  repivsented 
in  this  mark,  so  that  these  resemblances,  with  the 
name  liemy,  are  of  such  a  kind  as  to  deceive  the 

X>ublic  cm  the  origin  of  the  merchandise 

defendants  are  guilty  under  law  of  IS.")?,  articles  8, 
11],  14,  Damages  and  ccmtiscation  of  labels,  llemy 
t.  Manger,  C.  de  Paris,  8  .July,  187(5,  21  Ami.  do 
la  Pro.  200. 

§  1212.  LHce  names. —  Unlawful  rlmlry. — In- 
juneiion. — When  a  merchant  makes  useof  the  simi- 
larity of  his  name  and  that  of  an  old  and  well-known 
house,  with  the  evident  intent  of  profit ing  by  its 


4oG 


Frexcii  Decisioxs. 


notoriety,  the  proper  courts  liiive  authority  either  to 
o^'dor  tlie  necessary  measures  to  avoid  all  confu- 
sion or  to  enjoin  the  use  of  the  name  in  the  same 
kind  of  industry  as  that  of  the  older  house. 

2.  It  is  an  act  of  unlawful  rivalry  cm  tdie  part  of 
a  merchant  or  manufacturer  to  mention  a  known 
and  old  house,  in  such  a  way  as  to  cause  those  who 
do  not  know  well  the  two  establishments,  to  sup- 
X)ose  that  his  is  the  oldest  and  the  most  interested 
in  hindering  confusion.  Veuve  Erard  v.  Nicolas 
Erard  and  Coda,  C.  de  Paris,  29  July,  18T6,  23 
Aitti.  de  la  Fro.  277. 

§  1213.  Phd.r  mace  lit  leal  preparations. — Name 
of  compounder . — Feincy  name. — Fraudulent  Imi- 
tation.— In  matters  of  pharmaceutical  preparations 
as  well  as  in  all  others,  the  fancy  name  given  to  a 
product  by  its  inventor  or  proprietor  is,  like  his 
surname,  his  exclusive  property  unless  he  has 
abandoned  it,  or  the  preparation  has  no  other  dis- 
tinguishing name. 

2.  For  a  fraudulent  imitation  of  a  mark  under 
article  8  of  law  of  1857,  it  is  not  necessarv  that  the 
whole  label  should  be  imitated ;  it  is  sufficient  if 
the  title  of  the  preparation  is  taken  and  an  anal- 
ogous though  different  name  of  maker,  the 
remainder  of  the  labels  being  different. 

(Defendants,  when  asked  for  a  bottle  of  Elixir 
tonique  antiglaireux  of  Dr.  Guillie,  sold  a  bottle 
with  a  label  bearing  at  the  toj)  the  name  of  the 
pharmacy  Negre,  and  in  the  center  the  title  Elixir 
tonique  antiylaireu.x  F.  Guillie.  The  remainder  of 
the  label  was  different  from  that  of  Paul  Gage, 
manufacturer  of  the  true  elixir.)  Ministere  Pub- 
lic V.  Negre,  C.  de  Grenoble,  31  August,  1870,  2 
Ann.  de  la  Pro.  225. 


FItp:^x'il  Dkcisioxs. 


457 


§ 


1214.  Name.  —  Foreign  firm.  —  Action  in 
France. — Ilir/hls  of  asslc/)iee. —  Treat tj  l>e(ic('(ii. 
France  and  England. — The  {issi<i;n('e  of  the  iiMitie 
and  ti-adeniark  of  a  foreigner  lias  a  ii,<;lit  to  invoke 
file  leiifislafion  and  treaties  which  protect  this  name 
and  mark  in  liis  own  conntry.  The  special  leuislti- 
tion  and  treaties  which  reg'ulate  this  kind  of  i)i'o- 
perty  in  the  conntry  of  the  assignor  are  ininiateiial. 
Therefore,  an  English  company,  having  its  factory 
in  England,  assignee  of  the  name  and  marks  of  an 
American,  has  the  right,  nnder  the  treaties  between 
France  and  England,  to  follow  in  Fra.n(;e  the  usur- 
pation of  thv,  name  of  the  American,  without  ti;<; 
necessity  of  exanunation  as  to  whether  American 
legislation  and  FraiK'o- American  treaties  authorize 
snch  action. 

2.  Article  12  of  the  Commercial  Treaty  of  .Janu- 
ary 23,  18G0,  between  France  and  England.  ;ipi)lies 
not  (mlj^  to  trademarks,  but  also  to  surnames,  \e.  g. 
Howe)  serving  to  distinguish  tho  products  of  a 
mannfacturer  or  meichant. 

8.  When  a  defendant  who  has  usurped  a  name, 
demands  a  new  trial  on  the  ground  that  the  name 
has  entered  into  public  use  as  the  title  of  the  pro- 
duct manufactured,  the  judgment  against  him, 
finding  as  a  fact  that  the  plaintiff  has  done  every- 
thing to  ^(reserve  his  exclusive  pioperty  in  the 
name,  and  the  defendant  has  made  a  fraudulejir  use 
of  it  to  deceive  purchasers,  is  correct.  Comicigiiie 
Howe  Ti.  Onfray,  C.  de  Paris,  13  November,  lS7r),  (J, 
de  Cass.,  18  November,  1870,  21  Ann.  de  la  Pro. 
305. 

See  $^  1209. 

§  1215.  Fraudulent  ivrlfathn. — Eai(  de  vteli,s.se 
des  Cannes. — The  wording  of  plaintiir's  label  was 


"IPW 


458 


FiiExcii  Bkcisions. 


I!      !»■ 

i 


r.: 


'■•*».■> 


r^-,  -.^..^iit 


^r/;/  <^7*:'.9  Cannes  dh-hanHHeH  de  la  rue  de  Yauqiriird 
dr  B()f/ei\  Rue  Taratiiie  No.  14,  d  Paris, — of  tle- 
feiiduiUs  was  Eaii,  de  melisse  des  Cannes  de  hi  rue 
de  Vaiif/irard,  de  (Jelin,  Ko.  10."),  a  Paris,  The 
bottles  ol'  (!U('li  were  oE  the  same  form  and  size,  a;\il 
liad  the  name  of  the  produ(3t  blown  in  the  glass  ; 
tliey  were  corked  in  the  same  way,  sealed  with  a 
red  seal  in  the  same  place,  and  put  np  for  sale,  at 
wholesale,  in  similar  boxes,  with  inscriptions  and 
desii^ns  e(pially  tendini!;  to  establish  confusion  be- 
tween the  two.  Defendant  claimed  that  all  the 
dealers  in  eau,  de  melisse  had  adopted  like  bottles 
and  boxes,  and  that  his  name  and  address  were 
snfli(Ment  to  prevent  anj'"  confusion. 

Held,  a  violation  of  article  8  of  law"  of  18.J7. 
Boyer  v.  Gelin,  C.  de  Paris,  14  December,  1876,  22 
Ann.  de  la  Pro.  00. 

^  1210.  Name. — Injunction  against  use  of. — 
Whenever  a  merchant  lends  his  name  for  the  pur- 
pose of  causing"  an  unlawful  rivalry  with  anothei-,  he 
commits  such  a  Avrouii:  as  to  authorize  the  court  to 
enjoin  the  use  of  his  name  in  the  specific  trade.  J. 
F.  Martell  &  Co.  y.  J.  L.  Martel  &  others,  C.  de 
Bordeaux,  17  July,  1870,  C.  de  Cass.,  27  March, 
1877,  22  Ann.  de  la  Pro.  94 ;  Same  Case  beJow,  21 
Id.  284. 

§  1217.  Frandiilent  imitation. — Papiers  Joh 
and.  Jop. — The  use  of  the  of  the  word  Jop  is  a 
fraudulent  imitation  of  the  trademark  Joh,  Avhen 
the  chaiacter  and  color  of  the  letters  are  the  same, 
and  the  surrounding  designs  and  inscriptions  are 
similarly  arranged.  Bardou  v.  lloux,  Trib.  Corr. 
de  Toulouse,  3  May,  1877,  22  Ann.  de  la  Pro.  189. 
§  1218.  Name  of  manufacturer. — Sale. — The 
name  of  a  manufacturer,  when  used  in  a  peculiar 


I'  y 


i»W!f>i.l« 


ruExcii  Decisioxs. 


4.")!) 


form  as  u  trademark,  {e.ff.,  a  copy  of  tlu?  sigaariirci 
is  an  object  of  sale  together  with  the  good  will  and 
sto(!lv  of  his  business,  and  may  be  resold  by  tht^ 
assignee.  Reasoning  of  court, — the  stamp  (copy  of 
signature)  being  the  only  means  of  establishing  the 
source  of  the  goods,  and  of  retaining  the  custom 
depending  upon  it,  has  become,  by  force  of  the  cir- 
cumstances, an  ac(?e,ss(jry  t-o  the  business  transferred 
to  Morel — it  can,  consequently,  be  a  matter  of 
assignment  to  a  second  purchaser.  Com}>('ie  >'. 
Bajou,  C.  de  Paris,  10  June,  1834,  UpiotC a  Tradv- 
marlcH. 

%  1219.  Liquor  a  de  la  grande  Chartrcihs-e. — The 
liquor  generally  known  as  Cltari reuse,  having  ac- 
quired a  great  celebrity  in  Fran(;e,  was  extensively 
imitated.  The  suits  were  so  numerous  that  it  is  con- 
sidered desirable  to  group  them  togethei'  iri'es Elective 
of  dates.  In  18r)2, Louis  (jrarniei',  head  of  the  convent 
of  the  Grande  Chartreuse, legally  deposited  his  trade- 
marks and  labels.  In  suit  against  Kivoire  (4  Ann.  de 
la  Pro.  llo),  the  Tribunal  of  Commerce  of  Grenoble 
decided,  December  31,  18.j2,  that  Garnier  was  the 
sole  owner  of  the  liquor  known  as  Vhartreusr, 
whicli  takes  its  name  from  the  place  of  its  manu- 
facture, and  enjoined  defendants  against  the  use  t)f 
the  title  llqitear  de  Chartreuse.  Damages  were 
refused,  however,  because  of  the  tolerance  of  the 
monks  up  to  that  time.  On  a|)peal  defendants  con- 
tended that  the  word  Chartreuse  hnd  become  a 
generic  term  to  designate  the  kind  of  liquor  made 
by  the  monks  of  Chartreuse. 

The  jorinciples  announced  by  the  lower  court  were 
aflirmed  by  the  cour  de  Grenoble,  May  2,"),  18.");j,  say- 
ins:,   "  that  the  name  Chartreuse^  which  was  only  an 


^O) 


abbreviation  of  the  label  of  the  Chartreuse  monks, 


"  "  -JUPif'  '  ^r 


43;) 


FiiENX'ii  Decisions. 


1/ 


was  not  a  j^ono.Io  n:im3,  sach  as  a  iiamo  would  be 
vvbicli  was  derivod  from  the  nature  of  the  liquor  or 
the  substance  of  which  it  was  composed  ;  that  this 
liquor  had  been  thus  named  because  it  had  been 
invented  at  the  monastery  of  the  Grande  Chartreuse, 
and  was  made  there  by  the  Chartreuse  monks,  so 
that  this  name  designated  at  the  same  time  th'.'  ui- 
oetilor.t,  the  maniifdcturers  and  the 2>l('(^('  of  ni(Uiii- 
factitrc,  and  it  (H)nstitutes,  under  each  one  of  these, 
a  distinctive  mark  ;  a  name  which  cannot  be  applied 
with  truth  to  a  similar  or  analogous  product  manu- 
factured at  Grenoble  by  Rivoire  frei-es." 

The  judgment  added  that  the  monks  not  liaving 
a  monopoly  of  their  liquor,  yet  not  having  made 
known  their  process,  Rivoire  had  the  right  to  com- 
j)ound  a  similar  liquor,  if  he  could,  and  in  default 
of  another  name  to  give  it  one  drawn  from  its 
similarity  even, — such  as  Imitation  Chartreuse^ 
on  condition  that  they  be  written  in  identical  char- 
acters, or  so  that  they  may  not  have  the  effect  to 
turn  away  the  customers  of  the  monks.  C.  de 
Grenoble,  23  May,  1852,  Garnier  «.  Rivoire,  4  Ann. 
de  la  Pro.  115. 

§  1219  A.  One  Berthe,  pretending  to  manufacture 
his  liquors  in  the  Commune  of  Saint  Pierre,  in 
which  is  the  Grand  Chartreuse  Monastery,  claimed 
the  right  to  jjlace  on  his  labels,  liqueur  fabrlqaee  d 
Saint-Pierre  de  Chartreuse. 

He  was  adjudged  guilty  of  a  violation  of  law  of 
1 824,  and  of  article  423  of  Penal  Code,  and  ordered 
to  pay  a  line  of  125  francs,  and  500  francs  damages, 
with  insertion  of  notice  in  two  newspapers.  Gar- 
nier V.  Berthe,  Trib.  Com.  de  Grenoble,  April  2, 
1857,  4  A?i?i.  de  la  Pro.  119. 

§  1219  B.  In  1808,  numerous  suits  were  brought 


FnExni  DErisioxs. 


4ni 


nirninst  parties  in  and  about  Paris,  wIkmo  a  ti-ad^  in 
spurious  (lidrtrcu^i'.  liadspruni^  up.  Five  of  tlieni 
are  iv[)orte(l  at  page  220  ol'  the  AitwiJes,  vol.  J4  (  L. 
Gurnier  v.  Ludiere  and  others),  anotlier  (L.  Garnier 
v..  Piiul  Garnier)  at  p.  2.')2,  Id. 

The  same  cases  on  appeal  are  reported  at  p.  ',\T)?>, 
Id.  Some  of  the  defendants  reproduced  the  labnl 
of  plaintiffs,  but  added  in  characters  almost  imper- 
ceptible the  words,  ImiUdlon  of  lhi\  and  name  or 
initials  of  the  distiller.  Another  reproduced  the 
label  with  the  exception  of  Grande  Charticnsr,  in 
place  of  which  was  jnintcHl  Grande  Chrrrru.sr  in 
the  same  characters.  Another  substituted  Lapanr 
In/gieniqye  de  la  Grande  Vharlreiise,  printed  in 
two  lines,  in  place  of  Grande  Vhartrcuse,  the  le- 
mainderof  label  being'  similar.  Defendants  sought 
to  establish  their  good  faith,  and  the  absence  of  any 
real  damage,  resulting  from  the  long  tolerance  of 
the  monks,  and  from  the  difference  in  price  of  the 
true  and  imitation  liquors,  and  the  differences  of 
labels. 

It  was  held  in  these  cases,  according  to  the  cir- 
cumstances of  each,  that  there  is  an  infringement 
of  a  trademark  (article  7  of  law  of  18.")7),  the  moment 
that  the  intention  to  imitate  results  in  the  repro- 
duction of  the  trademark  with  only  such  differences 
as  are  due  to  imperfect  workmanship.  Also  that 
the  offense  of  fraudulent  imitation  (article  8,  law  of 
1857),  may  exist  though  the  fraudulent  mark  would 
not  necessarily  deceive  all  purchasers  ;  consequently 
the  indication  of  the  name  of  the  manufacturer  or 
even  the  substitution  of  another  name  for  the  pio- 
duct,  is  not  sufficient  to  remove  the  offense. 

That  the  manufacturer  who  sells  products  with 
labels  in  imitation  of  those  of  another  manufacturer, 


'    'r-* 


4G2 


FijENcii  Dkcisiojn's. 


is,  e(iii:illy  wUli  tlie  rehiil  deulei",  liable  to  tlio  [K-n- 
jilties  established  by  the  law,  although  the  substitu- 
tion ol'  his  (the  nianufactui'ei''s)  name  foibids  Ihe 
belief  that  the  retail  dealers  to  whom  he  delivei'ed 
his  /jfoods  had  been  personally  deceived  as  to  their 
natui'e  or  origin. 

That  it  is  not  necessary  to  establish  that  the  re- 
tailers at  wlKjse  stores  these  products  were  seized 
have  deceived  one  or  more  consumers.  It  is  suflicient 
that  the  mark  or  label  be  in  its  entirety  ol'  the  kind 
to  deceive  a  certain  numl)er  c^f  pmchasei's.  (xarnier 
y.'.  Ludiei'e,  Id.  v.  others,  C.  ile  Pai'is,  November  2."), 
and  D.^cember  :](),  18(58,  14  xi/ifi.  <h'  hi  Pro.  ;C):]. 

^  121!)  C.  In  1809  an  acti(m  was  brought  against 
one  Maitre  whose  labels  had  the  same  general  ai)- 
I)earance  as  those  of  the  monks,  but  also  important 
diirerences.  They  were  of  the  same  size,  shape  and 
coloi',  and  the  insci'iption  was  arranged  in  the  same 
Avaj',  bitt,  1st,  instead  of  being  ronnd,  the  darkened 
pearls  which  form  the  frame- work,  were  alternately 
round  and  oblong ;  2nd,  in  place  of  Liqueur 
FABiiiQUEE    A    LA    G]i"'=    CiiARTnEUSE,  was    read, 

LiQUEUU   FABUIQUEE  CO.MME  A   LA   LrVJ"^    CHAin'RE- 

USE  ;  3rd,  in  place  of  the  signature  L.  Garnier  with 
the  globe  surmounted  by  a  cross,  they  boi'e  the 
signature  Gullifet  et  Ce.  In  ISoO,  Gidlifet  &  Co. 
deposited  this  mark  as  required  by  law.  Defen- 
dant being  a  retailer  plead  good  faith.  Ilclf]  the 
defendant's  mark  w^as  calculated  to  deceive  buyers, 
and  cause  those  who  w^ere  not  attentive  at  the 
instant  of  purchase  to  believe  that  the  contents  of 
these  bottles  was  a  product  of  the  Convent  of  the 
Grande  Chartreuse.  Defendant  was  condemned  to 
pa^^  a  line  of  lOOf.  and  300f.  damages  to  plaintiffs 
(article  8,  law  of  1857).     Garnier  o.  Maitre,  Trib. 


,.^. 


FuExcii  Decfsions. 


4(1  { 


CoiT.  de  hi  Seine,  Junuaiy  27,  18.V,),  1')  .1////.  th  hi 
Pro.  87. 

^  1:219  D.  In  tlie  decisions  previously  uivcn  [  l"2l'.) 
13,  case  of  (jriirnier  r.  (lai'iiier),  the  coui't  decided 
that  the  word  (J/KuircK-sc  was  the  iitiiiic  oi'  a  ctMlaiM 
kind  of  liquor,  and  diil  not.  hy  itscH',  indicMtc  tli(> 
place  of  manufacture,  and  its  usurptition  did  not, 
therefore,  come  under  law  ui  I8*J4. 

Paul  Gamier,  after  the  decision  of  18(;8.  uiodilied 
liis  hd)els  by  replacing  the  darkened  iiearls.  wiijili 
liad  been  objected  to,  bv  a  solid  fianie  wo:!;.  ;;;!d 
sid)stitutiiig  in  place  of  his  former  title  the  wor'ls 
liqueur  v/i<(rlrvi(s(^  J'ahrlqni-i'  par  V.  (>'iii  niir. 
iSoon  after  he  issued  a  secoiid  edition,  and  added  at 
the  bottom  of  the  label  Xoi/oii  (Oise)  -jiis  residence. 
In  a  third  Ivind  of  label,  hirger  tlinii  the  othei-,  with 
no  framework,  he  placed  the  word  (_'nAU'ri;i:r>i:.  ia 
large  characters  with  his  signature  and  the  word 

NOYOX. 

In  court  of  iirst  instance,  IfeJd  that  the  filh^ 
6V(!«;"//Y?^/.se  was  a  generic  name,  given  to  a  certain 
kind  of  liquor  invented  l)y  the  (.'hartreuse  monks; 
that  it  liad  been  for  a  long  time  in  common  use,  and 
did  not  indicate  by  itself  the  place  of  manufacture. 
On  appeal,  Held  that  tlie  name  of  ('h<irlri'it:«\  a[>- 
plied  to  liquor  compounded  at  the  (fraiKh'  Char- 
treuse, is  not  a  generic  name,  such  as  a  nanw.'  (UMi\'ed 
from  the  naturoand  com])osition  of  the  liquors,  but 
an  abbreviation  of  the  labels  of  the  Chartixmse 
monks,  indicating  at  once  the  inventor,  the  manu- 
facturer and  the  place  of  manufacture. 

Therefore,  it  is  a  usurpation  of.  name  of  place  of 
manufacture,  under  law  of  1824,  for  a  manid'acturer 
to  use  the  word  Chartreuse  to  designate  a  liquor 


■^m 


*!( 


f 


I 

I 

1^' 


1)   ■;'.■ 


4G4 


Fkkxcii  Dkcisions. 


moro  ()!•  less  similnr  to  that  of  the  convent  of  the 
G;"a:ule  Cliarfrciise. 

It  is  so  o\'M\  though  the  hibels  used  by  tlie  niann- 
factiuvr  (liiFiMs  from  that  of  tlie  monks,  and  indi- 
cates a  diflorent  phure  of  nianfacture,  Lonis  Guinier 
V.  Paul  Garnier,  C.  de  Paris,  5  February,  1870,  10 
Ann.  f/f  1(1  Pro.  200  ;  Same  Case,  again  rei)orted, 
17  Id.  240.  Affirmed  by  Court  of  Cassation,  20 
April,  1872,  Id.  '2r>7. 

§  1210  PI  TJie  action  detailed  in  1210  1)  wa.s 
in  the  criminal  court.  A  civil  action  was  also 
brought  on  same  state  of  facts. 

JL'ld,  that  tlie  ownership  of  a  title  or  a  mark  is 
ac(piired  by  the  first  use  of  it,  independently 
of  any  deposit.  Consequently,  although  the  de- 
posit is  necessary  as  a  prerecjuisite  to  an  action 
under  tlie  law  of  18r)7  the  use  previous  to  the 
deposit  which  a  manufacturer  or  merchant  has 
made  of  a  title  or  of  a  mark,  cannot  be  pleaded  as 
causing  it  to  fall  into  common  use.  No  more  can 
the  unpermitted  use  of  it  by  a  third  person  be 
pleaded. 

The  title  Chartreuse,  employed  by  the  Chartreuse 
monks  to  designate  the  liquor  made  by  them  at  the 
Grand  Chartreuse,  is  their  exclusive  property,  indi- 
cating at  the  same  time  the  manufacturer  and  the 
place  of  manufacture. 

Therefore  the  Chartreuse  monks  have  an  action 
to  enjoin  all  other  manufacturers  or  dealers  against 
the  use  of  the  words  Chartreux  or  Chartreuse  to 
designate  liquors  or  elixirs  not  coming  from  the 
Grande  Chartreuse.  Louis  Garnier  t.  Paul  Garnier, 
C.  de  Paris,  10  May,  1870,  10  Aim.  de  la  Pro.  210 ; 
Same  Case  again  reported,  17  Td.  241. 

The  preceding  judgment  was  followed  in  case  of 


French  Dkcisions. 


405 


it  of  the. 

le  mann- 
ud  iiidi- 
4  Giiniier 
1870,  m 
iei)()rted, 
lalion.  2i') 

0    1)    WJLS 

was    also 

I  mark  is 
lendently 
li  the  do- 
aii  action 
IS  to  the 
liaiit  has 
•leaded  as 
more  can 
jerson  be 


L.  Garnier  tt.  Martin,  Trib.  Civ.  de  la  Heine,  :U  May, 
1870,  10  A/.n.  dc.  la  Pro.  '229. 

>5  I'itO  K.  When  a  miuuifacturer  has  adopted 
complex  trademarks,  it  is  sulUcicnt  to  siisiaiu  an 
action  that  he  has  deposited  his  principal  tiath'- 
marks  I'roni  which  the  former  weie  madt.'  up. 
Therefore,  one  is  liable  to  the  ])enallies  iixed  by 
article  8  of  law  of  18.")7,  who  has  nsed  one  or  m(»re 
elements  of  the  deposited  maiks,  all  hough  the 
mark  nsed,  snch  as  the  stanij*  on  ilie  corks  of 
bottles,  has  not  been  made  the  special  and  distinct 
subject  of  dei)osit,  if  otherwise  its  nse  is  of  a  kind 
to  deceive  buyers  as  to  the  ori<:;in  of  the  product. 
Appeal  from  Tribnnal  correctionnel.  Grezier  o. 
Chedeville,  C.  de  Paris,  11  June,  1875. 

30 


Ihartreuse 

|em  at  the 

!rty,  indi- 

|r  and  the 

m  action 
I's  against 
\treuse  to 
,&om  the 
|l  Garnier, 
Vo.  219  ; 


in  case  of 


m 


(yllJP.l     I 


APPENDIX 


CONTAI.MXG 

umrm  states  trademark  statutes  •  rut  f^  ov 

^T7T,-ir  ^^'^^^  STATES  PATENT  OEEICE- 

SIATCTE,  RLXES  AND  OEFICl  VJ    Foini^  r  uf' 
THE  REGISTRATION  OF  PRINTS Ldl^^^^^^^^^ 
AND    TRADEMARK   TREATIES    AND    CON 
VENTIONS  WITH  THE  UNITED  STATES 


UNITED  STATES  TlLil)E31AJ[K  STATUTES. 

TRADEMARKS. 
Title  LX,  Rev.  Stat.,  chai>.  2,  p.  00^  : 

Any  person  or  «nu  domidl.d  in  the   United  S^ttf^nd 
any  co.porat.oa  created   by  the  authority  of  tlu  U.',    ' 

on,  hzm,  cr  corpoa-ation  iPc-sident   of   or   located   i.^    tnv 
Wgn  c.ount.^  .hid,  by  treaty  or  convention  a^ord    2- 
^     m.  e.es  to  c.tj:.ns  of  ti.e  United  State.,  an<I  wJ.o  ar 
entitled  to  the  exchisive  use  of  anv  J-nvf,.l  fm  i  i 

who  i„,e,,.,  .„  .,„„„,  ,„„  „„,  ,„;:4i:t  r:::;  :■:: 

*  *  •'"'J.  "*"»,  c.  230,  s.  77,  V.  10.  i>.  210. 

[4G7J 


i 


mmmrm^w"^'' 


riy 


i 


I 


I'i  ^i^: 


4.;.>  Umtijo  Statks   SxATrrKs. 

tt'C'tioii  <if  thu  tniilc'iiiark  ;  iht'  rlass  of  lue-rcliandise,  niid 
tlio  ]t;u't"u'iil:ir  Jc'sfriptiori  of  goods  roiiiprlscMl  in  sucli  class, 
by  which  llio  trademark  lias  been  or  is  iuU'i.'ded  to  be 
ajiprojiriated  ;  a  descrii)tioii  of  the  trademark  itself,  Avith 
fae-simiU's  tliereof,  sliowing  the  ino(U'  in  wliicii  it  lias  been 
or  is  intended  to  be  aj){>lied  and  used;  and  the  length  of 
lime,  U'  any,  during  which  tlie  tradi'mark  lias  lu'cn  in  usi'. 

Second.  By  making  j)ayment  of  a  lee  of  twenty-live 
dollars,  in  the  same  manner  and  for  the  same  purpose  as 
the  fee  required  for  jjatents. 

Third.  l>y  conipiying  with  such  regulations  as  may  be 
prescribed  by  the  Comuiissiouer  of  Patents. 

Skc.  4D;J8.  Acrouipauyhifj  dedantfii)it  audi r  oath.* — 
The  certilicate  j)rescribed  by  \\w  jjreceding  section  must, 
in  order  to  create  any  right  whatever  in  favor  of  the  party 
liling  it,  lie  accompanied  by  a  written  declaration  verilie<l 
by  the  i>erson,  or  by  some  member  of  the  iirm  or  officer  of 
the  corporation  by  whom  it  is  tiled,  to  the  effect  that  the 
party  claiming  jirotection  for  the  trademark  lias  a  right 
to  the  use  of  the  same,  and  that  no  other  person,  Iirm,  or 
corporation  has  the  right  to  such  use,  either  in  the  identical 
form  or  in  any  such  near  resemblance  thereto  as  might  be 
calculated  to  deceive  ;  and  that  the  description  and  fac- 
similes presented  for  record  are  true  copies  of  the  trade- 
mark sought  to  be  protected. 

Sec.  40;] 0.  liestridlon  on  the  rcf/htnitlon  of  trade- 
tnarks.] — The  Commissioner  of  Patents  shall  not  receive 
and  record  any  proposed  trademark  which  is  not  and  can- 
not become  a  lawful  trademark,  or  which  is  merely  the 
name  of  a  person,  firm,  or  corporation,  unacirouipanied  by 
a  mark  sutKcient  to  distinguish  it  from  the  same  name 
Avhen  us'.'d  by  other  persons,  or  which  is  identical  with  a 
trademark  appropriate  to  the  same  class  of  merchandise 
and  belonging  to  a  different  owner,  and  already  register<'d 
or  received  for  registration,  or   which  so  nearly  resembles 

*  8  July,  1870,  c.  230,  s»  77,  v.  IC,  p.  210. 
t  Ibid.,  s.  79,  p.  211. 


m^ 


L'xiTKi)  States  Statute? 


40J 


;mili>C',  find 
II  such  c-i:iss, 
•I'lknl  to  be 
itsolf,  with 
I  it  has  been 
lie  U'ligth  of 
been  ill  iisi-. 

■  twenty-live 
e  purpose  as 

i:s  as  may  be 

liJa-  oath* — 
section   must, 

■  of  the  party 
■ation  veriiieil 
n  or  offieer  ol 
lYect  tliat  the 
■k  has  a  riglit 
■rson,  firm,  or 

the  identical 

as  might  be 

»tion  and  fac- 

of  the  trade- 

'ioa    of  trade- 
1  not  receive 

not  and  can- 
is  merely  the 
i-ompanied  by 
le  same  name 
entieal  with  a 

merchandise 
ady  registen'd 
irly  resembles 

210. 


such  last-mentioned  trailemark  a-;  to  be  Iik(»ly  to  deceive 
the  public.  But  this  section  shall  not  ]>revent  the  registry 
of  any  lawful  trademark  rightfully  in  use  on  the  eighth 
day  of  July,  eighteen  hinidred  and  seventy. 

Sec.  4940.  Tiina  of  rerrlpt  of  trademark  for  registra- 
tion to  he  eertifeil^' — The  time  of  therecei)'>t  of  any  trade- 
mark at  the  Patent  O'Hce  for  registration  shall  be  noted 
and  recorded.  Co])ies  of  the  trademark  and  of  the  d;rte 
of  the  receipt  thereof,  and  of  the  statement  tiled  therewith, 
under  the  seal  of  the  Patent  Office,  certilied  by  the  Com- 
missioner, shall  be  evidence  in  any  suit  in  which  such 
trademark  shall  be  brought  in  controversy. 

Sec.  4041.  Thirafio)!  of  protect  km  of  rcffistcraj  trade 
marl',  and  rencii'af.\ — A  traflemnrk  registered  as  above 
prescribed  shall  remain  in  force  for  thirty  years  from  the 
date  of  such  registration;  exee))t  in  cases  where  such  trade- 
mark is  claimed  for  and  a|>i)lied  to  articles  not  manu- 
factured in  this  country  and  in  which  it  receives  protection 
under  the  laws  of  any  foreign  country  for  a  shorttr  j)eriod, 
in  which  case  it  shall  cease  to  have  any  force  in  this 
country  by  virtue  of  this  act  at  the  same  time  that  it 
becomes  of  no  effect  elsewhere.  Such  trademark  durijig 
the  period  that  it  remains  in  force  shall  entitle  the  person, 
firm,  or  corporation  registering  the  same  to  the  exclusive 
use  thereof  so  far  as  regards  the  description  of  goods  to 
which  it  is  a])propriated  in  the  statement  tiled  under  oath 
as  aforesaid,  and  no  other  person  shall  lawfully  use  the  same 
trademark,  or  substantially  the  same,  or  so  nearly  resem- 
bling it  as  to  be  calculated  to  deceive,  u))on  substantially 
the  same  description  of  goods.  And  at  anv  time  during 
the  six  months  prior  to  the  expiration  of  the  term  of  thirty 
years,  application  may  be  made  for  a  renewal  of  such 
registration,  under  regulations  to  be  prescribed  by  the 
Commissioner  of  Patents.  The  fee  for  such  renewal  shall 
be  the  same  as  for  the  original  registration;  and  a   cer- 

*  8  July,  ISTO,  c.  2150.  s.  80,  p.  211. 
t  Ibia.,'s.  T8.  p.  211. 


w 


^J 


United  Sjatks  Statutes. 


i. 


fif 


lillvulc  ol'  suflj  it'iiewiil  shall  be  issued  in  the  saine  nianiicr 
us  i'or  the  origiiuil  registration;  anil  such  tva<lemark  shall 
reiuain  in  force  i'or  a  further  term  of  tliirty  years. 

iii:v.  4r>4:i,  Reintibj  for  liifrliif/cinent  of  ro/jtstcred  tradr- 
Huxr/tS* — Any  person  whoshall  reprotluce,  counterfeit,  copy, 
or  imitate  any  recorded  trademark,  and  affix  the  same  to 
goods  of  substantially  the  same  descriptive  properties  and 
<pialities  as  those  referred  to  in  the  registration,  shall  be 
liable  to  an  action  on  the  case  for  damages  for  such 
wrongful  use  of  such  trademark,  at  the  suit  of  the  owner 
thereof  ;  and  the  party  aggrieved  shall  also  liave  his 
remedy  according  to  the  course  of  e(piity  to  enjoin  the 
wrongful  use  of  his  trademark  and  to  recover  compen- 
sation therefor  in  any  court  having  jurisdiction  over  the 
person  guilty  of  such  Avrongful  use. 

Skc.  494:1.  Rest)' let  ion  upon  actions  for  infrlrigement,\ — 
No  action  shall  be  maintaineil  under  tlie  provisions  of  this 
chapter  by  any  ])erson  claiming  the  exclusive  right  to  any 
trademark  which  is  used  or  claimed  in  any  unlawful  busi- 
ness, or  upon  any  article  which  is  injurious  in  itself,  or 
upon  any  trademark  which  has  been  fraudulently  obtained, 
or  which  has  been  formed  and  used  with  the  design  of 
deceiving  the  puldic  in  the  purchase  or  use  of  any  article 
of  merchandise. 

Sec.  4044.  Peno.ltij  for  false  recfistratlon  of  trade- 
niarks.\ — Any  person  who  shall  procure  tlie  registry  of  any 
trademark,  or  of  himself  as  the  owner  of  a  trademark,  or 
an  entry  respecting  a  trademark  in  the  Patent  Office,  by 
making  any  false  or  fraudulent  representations  or  declar- 
ations, verbally  or  in  writing,  or  by  any  fraudulent  means, 
shall  be  liable  to  pay  any  damages  sustained  inconsequence 
of  any  such  registry  or  entry  tothe  person  injured  thereby; 
to  be  recovered  in  an  action  on  the  case. 


*  8  July,  1870,  c.  230,  s.  70,  v.  10,  p.  211. 
t  Ibid.,  s.  84,  p.  213. 
i  Ibid,,  s.  S2. 


■»-1f 


Uniticd  Statks  Statutes. 


471 


nianiuT 
,1-k  shall 

d  tratlf- 
■it,('opy, 
same  to 
•ties  and 
fsball  bo 
for   such 
[je  owner 
have   his 
njoin  the 
cumpen- 
over  the 

ement.\ — 
ns  of  this 
;ht  to  any 
wful  busi- 
i  itself,  or 
obtained, 
design  of 
ny  article 

of   trade- 
ttry  of  any 
iemavk;  or 
1  Office,  by 
or  declar- 
ant means, 
)usequcnce 
Id  thereby; 


Src.  4045.  Former  rirjlils  and  7'fi))tedt\'s  jjrr.tprrtd*— 
Xotliing  in  this  cliapter  shall  prevent,  lessen,  iiiipcach,  or 
avoid  any  remedy  at  law  or  in  ecjuity,  which  any  party 
aggrieved  by  any  wrongful  nse  of  any  trademark  might 
have  had  if  the  provisions  of  this  chapter  had  not  been 
enacted. 

Sec.  4946.  Scuu'ng  as  to  rkfhts  after  e.Tjnration  of  tt-rm 
for  iohich  a  trademark  Jias  been  rerjit<tered.\ — Nothing  in 
this  chapter  shall  be  construed  by  any  court  as  abridging 
or  in  any  matter  atFecting  unfavorably  the  claim  of  any 
person  to  any  trademark  after  the  expiration  of  the  term 
for  which  such  trademark  was  registered. 

Sec.  4047.  Jler/ illations  for  transfer  of  ru/fits  to  trade- 
inarks,\ — The  Commissioner  of  Patents  is  authorized  to 
make  rules,  regulations,  and  prescribe  forms  for  the  trans- 
fer of  the  right  to  the  use  of  trademarks,  conforming  as 
nearly  as  practicable  to  the  recpiirements  of  law  respecting 
the  transfer  and  transmission  of  copyrights. 


AN  ACT 

To  punish  the  counterfeiting  of  trademark  goods  and  the 
sale  or  dealing  in  of  counterfeit  trademark  goods. 
Approved  August  14th,  1870. 

Be  it  enacted  by  the  Sexate  and  House  ok  IIep- 

UESKN'TATIVES  OF  THE  UNITED  StATESOF  AmERICA  IN'  COX- 

cuEss  ASSEMBLED. — Penalty  for  selling  or  offering  fn'  sale 
goods  bearing  a  fraudulent  trademark. — ""I'liat  every  jjei'son 
who  sliall  with  intent  to  defraud,  deal  in  or  sell,  or  keep  or 
ofler  for  sale,  or  cause  or  procure  the  sale  of,  any  goods  of 
substantially  the  same  descriptive  properties  as  those  re- 
ferred to  in  the  registration  of  any  trademark  pursuant  to 

*  8  Julv,  1870,  c.  230,  s.  83,  v.  10,  p.  211. 
t  Ibid.,'  s.  78. 
i  Ibid.,  s.  81. 


r  r -"-I  '.Tr»S' 


i''f 


47J 


Unitj-;d   States  Statutes. 


».'  £< 


l''-Pi 


the  statutes  of  thu  Unitod  States,  to  which,  or  to  tho  pack- 
age ill  which  tlie  saiiu!  are  put  up,  is  fraudulently  altixed 
said  trademark,  or  any  colorable  imitation  thereof,  calcu- 
lated to  deceive  the  public,  knowing  the  same  to  be  coun- 
terfeit or  not  the  genuine  goods  referred  to  in  said  regis- 
tration, shall,  on  conviction  thereof,  be  punished  by  line 
not  exceeding  one  thousand  dollars,  or  imprisonment  not 
more  than  two  years,  or  both  such  tine  and  imprisonment. 

Sec.  2.  Pen (dt (J  for  affixing  frandHlent  trademark. — That 
'■--"vy  person  who  fraudulently  affixes,  or  causes  or  ])ro- 
.^  v.  i  to  be  fraudulently  affixed,  any  trademark  registered 
^j...':  liiuit  to  the  statutes  of  the  United  States,  or  any  color- 
able imitation  thereof,  calculated  to  deceive  the  public,  to 
anv  good.'  -f  substantially  the  same  descriptive  properties 
as  those  veferre<J  to  in  said  registration,  or  to  the  package 
in  which  thry  are  put  up,  knowing  the  same  to  be  coun- 
terfeit, or  not  the  genuine  goods  referred  to  in  said  regis- 
tration, shall,  on  conviction  thereof,  be  punished  as  pre- 
scribed in  the  first  section  of  this  act. 

Sec.  3.  Penalty  for  ^iidtlng  7ij)  packages  hearing  franda- 
leut  trademark. — That  every  person  who  fraudulently  fills, 
or  causes  or  procures  to  be  fraudulently  filled,  any  j)ackage 
to  \\hich  is  affixed  any  trademark,  registered  pursuant  to 
the  statutes  of  the  United  States,  or  any  colorable  imita- 
tion th(MH  of,  calculated  to  deceive  the  public,  with  any 
goods  of  substantially  the  same  descriptive  properties  as 
those  referred  to  in  said  registration,  knowing  the  same  to 
be  counterfeit,  or  not  the  genuine  goods  referred  to  in  said 
registration,  shall,  on  conviction  thereof,  be  punished  as 
prescribed  in  the  first  section  of  this  act. 

Sec.  4.  Mamifacturing  fraudulent  trademark. — That  any 
person  or  persons  who  shall,  with  intent  to  defraud  any 
pi'rson  or  persons,  knowingly  .and  willfully  cast,  engrave,  or 
manufacture,  or  have  in  his,  her,  or  tluiir  possession,  or 
buy,  sell,  offer  for  sale,  or  deal  in,  any  die  or  dies,  plate 
or  |)lates,  brand  or  brands,  engraving  or  engravings,  on 
wood,  stone,  metal,  or  other  substance,  moulds,  or  any 


United  States  SrATfTE; 


478 


f.'ilso  representation,  likeness,  copy,  or  of)loral)Ie  imitation 
of  any  die,  ])late,  brand,  engravini?,  or  mould  of  any  pri- 
vate lal)el,  Itrand,  stamp,  wrapper,  enjjraving  on  paper  or 
other  substance,  or  trademark,  registered  pursuant  to  the 
statutes  of  the  United  States,  sliall,  upon  eonvietion  there- 
of, be  punished  as  prescribed  in  the  first  section  of  tiiis 
act. 

Skc.  5.  DixiUng  in  fraudulent  trademarl: — Tliat  any  per- 
son or  persons  wlio  shall,  with  intent  to  defraud  any  i)er- 
son  or  persons,  knowingly  and  willfully  make,  forge,  or 
counterfeit,  or  have  in  his,  her,  or  their  possession,  or  buy, 
sell,  offer  for  sale,  ordeal  in,  any  representalion,  likeness, 
similitude,  copy,  or  colorable  imitation  of  any  private  la- 
bel, brand,  stamp,  wrapiter,  engraving,  mould,  or  trade- 
mark, registered  pursuant  to  the  statutes  of  the  United 
States,  shall,  upon  conviction  thereof,  be  jamished  as  pre- 
scribed in  the  first  section  of  this  act. 

Sec.  G.  Po.^i^anxloii  of<  mpti/  box  or  parhKje  Itarlu</  nf/is- 
tered  trademark  loith  intent  to  defraud. — That  any  person 
who  shall,  with  intent  to  injure  or  defraud  the  owner  of 
any  trademark,  or  any  other  person  lawfully  entitled  to 
use  or  protect  the  same,  buy,  sell,  offer  for  sale,  deal  in  or 
have  in  his  possession,  any  used  or  empty  box,  envelope, 
wrapper,  case,  bottle,  or  other  package,  to  which  is  affixed, 
so  that  the  same  may  be  obliterated  without  substantial 
injury  to  such  box  or  other  thing  aforesaid,  any  trade- 
mark, registered  pursuant  to  the  statutes  of  the  Unitt'd 
States,  not  so  defaced,  erased,  obliterated,  and  destroyed 
as  to  prevent  its  fraudulent  use,  shall,  on  conviction  there- 
of, be  punished  as  prescribed  in  the  first  section  of  this 
act. 

Sec.  7.  Proceedings  to  detect  fraudulent  trtnhtnark.  Ju- 
risdiction of  United  States  courts.— TXxai  if  the  owner  of 
any  trademark,  registered  pursuant  to  the  statutes  of  the 
United  States,  or  his  agent,  make  oath,  in  writing,  that  he 
has  reason  to  believe,  and  does  believe,  that  any  coiniter- 
feit  dies,  plates,  brands,  engravings  on  wood,  stone,  metal, 


Rppp^pf?"^ 


^r     |i 


k''  '*'  ■ 


i  J. 


li  'I' 

■'If- 

.1 


Pfffi' 


47  i 


UxiTED  States  Statutes. 


();•  other  siil)st;iiico,  or  moulds  of  his  said  ivgistorcil  trado- 
niark,  are  in  the  possession  of  any  person,  Avitli  intent  to 
use  the  same  for  the  purpose  of  deception  and  fraud,  or 
makes  sucli  oaths  that  any  counterfeits  or  colorable  imi- 
tations of  his  said  trademark,  label,  brand,  stamj),  wrap- 
per, engraving  on  paper  or  other  substance,  or  empty 
box,  envelope,  wrapper,  case,  bottle,  or  other  package, 
to  which  is  affixed  said  registered  trademark  not  so  de- 
faced,  erased,  obliterated,  and  destroyed  as  to  prevent  its 
fraudulent  use,  are  in  the  possession  of  any  person,  with 
intent  to  use  the  same  for  the  purpose  of  deception  and 
fraud,  then  the  several  judges  of  the  circuit  and  district 
courts  of  the  United  States  and  the  commissioners  of  the 
circuit  courts  may,  within  their  respective  jurisdictions,  pro- 
ceed under  the  law  relating  to  search-warrants,  and  may  is- 
sue a  search-warrant  authorizing  and  directing  the  marshal 
of  the  United  States  for  the  proper  district  to  search  for 
and  seize  all  said  counterfeit  dies,  plates,  brands,  engrav- 
ings on  wood,  stone,  metal,  or  other  substance,  moulds,  and 
said  counterfeit  trademarks,  colorable  imitations  thereof, 
labels,  brands,  stamps,  wrappers,  engravings  on  paper,  or 
other  substance,  and  said  empty  boxes,  envelopes,  wrap- 
pers, cases,  bottles,  or  other  packages  that  can  be  found; 
and  upon  satisfactory  proof  being  made  that  said  counter- 
feit dies,  plates,  brands,  engravings  on  wood,  stone,  metal, 
or  other  substance,  moulds,  counterfeit  trademarks,  coloi*- 
ablc  imitations  thereof,  labels,  brands,  stamps,  wrappers, 
engravings  on  paper  or  other  substance,  empty  boxes,  en- 
velopes, wrappers,  cases,  Ijottles,  or  other  packages,  are  to 
be  used  by  the  holder  or  owner  for  the  purposes  of  decep- 
tion and  fraud,  that  any  of  said  judges  shall  have  full  pov.er 
to  order  all  said  counterfeit  dies,  plates,  brands,  engrav- 
ings on  Avood,  stone,  metal,  or  other  substance,  moulds, 
counterfeit  trademarks,  colorable  imitations  thereof,  labels, 
brands,  stamjis,  wiappers,  engravings  on  paper  or  other 
substance,  empty  boxes,  envelopes,  wrappers,  cases,  bottles, 
or  other  packaj'es,  to  be  publicly  destroyed. 


Kl'lks  I.N  Ti:aj)e.mai:k  Casks, 


,.) 


Skc.  y.  P,'/n/lf !//<)/'  (/Uffi/ii/  clohit'ton  of  pncvd'ni'j  sec- 
fioH.s.— That  jiiiy  person  who  shall,  with  inti'ut  to  (Icfrjuid 
iiiiy  piTsoii  or  porsons,  knowingly  jind  willl'Mlly  i\u\  or  ahi't 
in  Ihu  viulation  oi"  any  of  tlio  provision.-i  of  this  act,  shall, 
upon  coiiviction  tlioroof,  be  i)Mnishe(l  by  a  fine  not  exceed- 
ing five  hundred  dollars,  or  iniprisonnient  not  more  tlian 
one  year,  or  both  such  fine  and  imprisonment. 


UNITED  STATES  I'ATEST  OFFICE.-IiULES 
IN  TllADEMAUK  CASES. 


i 


TRADE:\rARKS. 

84.  Trademarks,  how  to  secure  f/ttui. — Any  person  or 
firm  domiciled  in  the  United  States,  and  any  eori)oration 
created  by  the  authority  of  the  United  States,  or  of  any 
State  or  Territory  thereof,  and  any  person,  firm,  or  cor- 
poration resident  of  or  located  in  any  foreign  country 
which,  by  treaty  or  convention,  affords  similar  privileges 
to  citizens  of  the  United  States,  and  who  are  entitled  to 
the  exclusive  use  of  any  lawful  trademark,  or  who  intend 
to  adopt  and  use  any  trademark  for  exclusive  use  Avithin 
the  United  States,  may  obtain  protection  for  such  lawful 
trademark  by  complying  with  the  following  requirements, 
to  wit: 

First.  Proceediitf/  necessary.— By  causing  to  be  recorded 
in  the  Patent  Office  the  names  of  the  parties,  and  their 
residences  and  place  of  business,  who  desire  the  protection 
of  the  trademark. 

Second.  The  class  of  merchandise  and  the  particular 
description  of  goods  comprised  in  such  class,  by  which  the 
trademark  ])ad  been  or  is  intended  to  be  appropriated. 


r;r 


irrr-r 


M 


470 


Rules  ix  Tkademauk  Cases. 


I-- .' 


I?'« 


If     I 


i^'  m 


Thlnl.  A  (It'scription  of  flio  traik'mark  ifsolf,  witJi 
fiU'-simik's  tlu'ivol",  and  the  mode  in  which  it  has  been  or 
is  intended  to  he  a]>i)lied  and  used. 

Foio-f/t.  The  length  of  time,  if  any,  during  whioli  tlie 
trademark  lias  been  used. 

Fifth,  Tlie  payment  of  a  fee  of  twenty-five  dolhirs,  in 
the  same  manner  and  for  the  same  purpose  ,as  tlie  fee  re- 
quired for  patents. 

iSLcf/i.  Tlie  eom])lianec  with  such  reguhitions  as  may  be 
prescribed  by  the  Cominissioner  of  Patents. 

Semnth.  Tlie  filing  of  a  declaration,  under  the  oath  of 
the  person,  or  of  some  member  of  the  iirm  or  oflieer  of  the 
corporation,  to  the  effect  that  the  party  claiming  ]»rotectioii 
for  the  trademark  has  a  right  to  the  use  of  the  same,  and 
that  no  other  person,  firm,  or  corporation  has  a  right  to 
such  use,  either  in  the  identical  form  or  having  such  near 
resemblance  thereto  as  might  be  calculated  to  deceive,  and 
that  the  description  and  fac-similes  presented  for  record 
are  true  copies  of  the  trademark  sought  to  be  protected. 
The  oath  must  also  state  the  citizenship  of  the  person  de- 
siring registration. 

The  petition  asking  for  registration  should  be  accom- 
panied W'ith  a  distinct  statement  or  specification,  se  ting 
forth  the  domicile  and  residence  of  the  applicant,  the 
length  of  time  the  trademark  has  been  used,  the  mode  in 
Avhich  it  is  intended  to  apply  it,  and  the  particular  descrip- 
tion of  goods  comprised  in  the  class  by  which  it  has  been 
appropriated,  and  giving  a  full  description  of  the  design 
proposed,  particularly  distinguishing  between  the  essential 
and  the  non-essential  features  thereof. 

85.  How  long  the  rUjht  may  inure. — The  i>rotection  for 
such  trademark  will  remain  in  force  for  thirty  years,  and 
may,  upon  the  payment  of  a  second  fee,  ^e  renewed  for 
thirty  years  longer,  except  in  cases  where  such  trademark 
is  claimed  for,  and  applied  to,  articles  not  manufactured 
in  this  country,  and  in  which  it  receives  protection  under 
the   laws  of  any  foreign  country  for  a  shorter  period,  in 


llti 


RuLK>  IX  Tkadkmauk  Cases. 


Hii^i  I  I  II 


wliicli  c;i>o  it  sli.ill  ci'aso  to  li;i\i'  rorco  in  this  country,  l>y 
virtuo  of  till-  resist iMlioii,  at  tliL-saiiK'  tiinu  that  it  bt'i-oiius 
of  no  c'fTc'ct  c'lsewhc'ie. 

80.  Proper  Kufijicts  j'lir  tnnJi'hiarJiS. — Nu  |ii'<ii)(i>{il  traih- 
mark  will  hu  rcccivi'il  (jr  rcoonlcd  which  is  not  ami  caiiiioi 
bt'coino  a  lawful  trademark,  or  which  is  nicrcly  the  iiainc 
of  a  iiorsoii,  linn,  or  cori»oration  only,  uriaccDiiipanicd  hy 
a  mark  siiHiciciit  to  distiiigulsli  it  from  the  saiiK'  nainc 
when  used  )»y  other  persons,  or  which  is  identical  Avith  a 
trademark  appropriate  to  the  same  class  of  merchaiidisi- 
and  beloii!4'iiig  to  a  different  owner,  and  alreatly  registereil 
or  received  for  registration,  or  which  so  nearly  resembles 
such  last-mentioned  trademark  as  to  be  likely  to  deceive 
the  public  :  but  any  lawful  trademark  riglitfidly  nsvA  al 
the  time  of  the  passa;|e  of  the  act  relating  to  trademarks 
(July  8,  1870)  may  be  registered. 

Proceed  III  ijii  in  (he  office.—  All  api)lications  for  registra- 
tion are  considered  in  the  first  instance  by  tlie  TracU'mark 
Examiner.  From  adverse  decision  by  such  Exaiiiner  upon 
the  applicant's  right  to  registration,  an  ai>peal  directly  t<> 
the  Commissioner  will  lie,  no  foe  being  charged   therefor. 

In  case  of  conflicting  applications  for  registration,  the 
Office  reserves  the  right  to  declare  an  interference,  in  order 
that  the  parties  may  have  opportunity  to  prove  priority  of 
adoption  or  riglit  ;  and  the  proceedings  on  sucli  interfer- 
ence will  follow,  as  nearly  as  practicable,  the  practice  in 
interferences  upon  applications  for  patents. 

87.  Pac-.'iiiii/fe.^  to  be  Jileil, — Whei-e  the  trademark  can 
be  represented  by  a  fac-simile  which  conforms  to  the  rules 
for  drawings  i>f  mechaiucal  patents,  such  a  drawing  may 
be  furnished  by  ap[)licant,  and  the  additional  copies  will 
be  produced  by  the  photo-lithographic  process,  at  the  ex- 
pense of  the  OlHce.  Or  the  ai)plicant  may  furnisli  one  fac- 
simile of  the  trademark,  mounted  on  a  card  ten  by  fifteen 
inches  in  size,  and  ten  additional  copies,  upon  flexible  pa- 
per, not  mounted,  as  in  designs,  but  in  all  cases  the  mount- 
ed fac-simile  or  the  drawing  must  be  signed  by  the  appli- 


1^ 


71^ 


Official   Forms. 


cant  or  liis  authorized  attornoy,  and  the  signaturo  must  he 
attested  hy  two  witnesses. 

H8.  TfinlciiKn'h'K  dxaitjHdbh'. — Tlie  risijht  to  tlie  ti  -  oi' 
any  trademark  is  assi^nahk'  hy  any  instrunient  of  wi 
and  sueli  assiLjnnient  must  he  I'eeonled  in  the  Patent  ''^^'ice 
within  sixty  days  after  its  execution,  in  default  of  whieli 
it  shall  he  void  as  against  any  suhseijuent  ])urehaser  or 
mort«^a<^ee  for  a  valuahle  eonsideration,  M'ithout  notice. 
The  fees  will  he  the  same  as  are  preserihed  for  recording 
assignments  of  patents. 


-t 


I 


OFFICIAL  FORMS. 

Petition. 
11. — FOR  THE  REGISTRATION  OF  TRADEMARK. 

To  the  Commissioner  of  Patents : 

Your  petitioner  [or  j)etitioners,  if  a  firm]  respectfully 
represents  that  he  [or  it,  if  a  corporation]  is  engaged  in 

the   manufacture    of   ,  at   ,  and   at  , 

,  and  that  he  is  entitled  to  the   exclusive   use  upon 

the  class  of  goods  which  he  manufactures  of  the  trademark 
described  in  the  annexed  statement  or  spccifica  ion,  and 
illustrated  in  the  accompanying  fac-simile. 

He  therefore  prays  that  he  may  be  permitted  to  obtain 

protection  for  such  lawful  trademark  under  the  law  in  such 

cases  made  and  provided. 

A.  B. 

8j)eciJication. 

20. FOR   A   TRADEMARK. 

\_Ifthe  application  is  imule  hy  a  coiporation  or  a  Jinn  thisfonn  should 
ie  modijied  to  conform  to  the  facts.] 

To  nil  ichom  it  may  concern : 

Be  it  known  that  I,  [here  insert  the  name  of  the  appli 
cant,]  domiciled  in  the  [United  States,  or  in  the  Dominion 


Official  Forms. 


iJ 


of  Cuiada,  or,  as  the  case  may  be,  |  iviiil  ii'sidiiig  at , 

ainl  (loiiiif  husiiK'ss  at ,  in  the  county  of ,  and 

State  of ,   have   adopted   [or  intend  to  adopt]    for 

my   use  a  trademark  for ,  of  wliich  the  following 

specilieation  is  a  full,  clear,  and  exact  description: 

My  trademark  consists  of  tlio  letters  and  words,  S.  N. 
&  Co.'«  IJuckeye  Sheetings.  These  generally  have  been 
arranged  as  shown  in  the  accompanying  fac-simile;  above 
and  below  a  figure  of  a  man  represented  as  ascending  the 
side  of  a  mountain  and  carrying  a  banner,  upon  wliich  is 
inscribed  the  word  "  IJuckeye;"  and  the  whole  has  been 
inclosed  within  an  ornamental  border  substantially  like 
that  shown  in  the  fac-simile.  But  the  figure  of  the  man 
with  the  banner  may  be  omitted,  or  some  other  device  sub- 
stituted for  it,  and  the  border  may  be  changed  at  i)leasure 
or  omitted  altogether  without  materially  changin<,'  the 
character  of  my  trademark,  the  essential  features  of  which 
arc  the  letters  S.  N.  ifc  Co.'s  and  the  word-symbol  Buckeye. 

This  trademark  I  have  used  in  my  business  for  ten  years 
last  past. 

The  class  of  merchandise  to  which  the  trademark  is  ap- 
propriated  is ;  and   the   particular  descrijition  of 

goods  [comprised  in  said  class]  upon  which  I  use  my  said 

trademark  are .     I  have  been  accustomed  to  print  it 

in  blue  ink  upon  each  piece  of  said  goods,  and  also  to  have 
it  printed  on  labels,  which  I  afterward  paste  ujjon  said  ar- 
ticles or  on  boxes  and  cases  containing  the  same. 

A.  B. 

Witnesses :  C.  D. 
F.  H. 

30. — DECLARATION  OF   APPLICANT   FOR   REGISTRATION  OF  A 

TRADEMARK. 

[If  tJie  application  is  made  hj  a  corporation,  or  a  firm,   this  foi^m 
should  be  modified  to  cuvform  to  the  facts.] 


State  of 


-,  Count}/  of- 


A.  B.,  bei-.g  duly  sworn,  deposes  and  says  that  he  is  the 


hi 


48v)   Registration  of  PnmTS  and  Labels. 

ujtplic.iiit  named  in  the  accompanying  j^etif  ion  ;  that  lie 
vorily  believes  that  the  facts  set  forth  in  the  foregoino: 
specification  are  true  ;  that  he  has  a  right  to  the  use  of  the 
trademark  described  in  said  specification  ;  that  no  other 
person,  firm,  or  corporation  has  the  right  to  such  use,  either 
in  the  identical  form  or  in  any  such  near  resemhlance 
thereto  as  might  be  calculated  to  deceive  ;  that  the  de- 
scription and  f ac-similes  presented  for  record  are  true  cop- 
ies of  the  trademark  sought  to  be  protected,  and  that  he 
is  a  citizen  of  the  United  States,  (or,  a  citizen  of  the  Re- 
public of  France,  or,  as  the  case  may  be.) 

A.  B. 
Sworn  to  and  subscribed  before   me  this   loth  day  of 

,  187- 

E.  F., 
Justice  of  the  Peace. 


r  !>■', 


I,;i* 


REGISTRATION  OF  PRINTS  AND  LABELS. 

By  an  act*  of  Congress  entitled  "  An  act  to  amend  the 
law  relating  to  patents,  trademarks,  and  copyrights,"  ap- 
proved June  18,  1874,  (to  take  effect  on  and  after  the  1st 
day  of  August,  1874,)  it  is  provided,  in  the  3d  section 
thereof,  that  certain  prints  and  labels  may  be  registered  iu 
this  Office  : 

Sec.  3.  That  in  the  construction  of  this  act  the  words 
"Engraving,"  "cut,"  and  "print"  shall  be  app'ied  only  to 
pictorial  illustrations  or  works  connected  with  the  fine 
arts,  and  no  prints  or  labels  designed  to  be  used  for  any 
other  articles  of  manufacture  shall  be  entered  under  the 
copyright  law%  but  may  be  registered  in  the  Patent  Ofiice. 
And  the  Commissioner  of  Patents  is  hereby  charged  witli 
the  supervision  avid  control  of  the  entry  or  registry  of  such 
print  or  labels,  iu  conformity  with  the  regulations  pro- 


*  See  Marsh  v.  Warren,  cited  at  foot  of  page  517. 


ELS. 


Regi^^tkatiox  of  Prtxts  axd  Labels.    4S1 


1  ;  that  lie 

!  use  of  the 
D  no  other 
use,  cither 
esemhlance 
lat  the  de- 
•e  true  cop- 
md  that  he 
of  the  Re- 

A.  B. 

Loth  day  of 

:.  F., 

the  Peace. 


,ABELS. 

|o  amend  the 

rights,"  ap- 

t'ter  the  1st 

3d  section 

registered  in 


3t  the  words 
)iied  only  to 
fith  the  fine 
lisfd  for  any 
k  under  the 
Jatent  Ofiice. 
Iharged  with 
listry  of  such 
Vlations  pro- 

517. 


vidcd  by  law  as  to  copyright  of  prints,  except  that  thore 
shall  be  })aid  for  recording  the  title  of  any  print  or  label, 
not  a  trademark,  six  dollars,  which  shall  cover  the  expense 
of  furnishing  a  copy  of  the  record  under  the  seal  of  the 
Connnissioner  of  Patents,  to  the  party  ontcruig  the  same. 

Skc.  4.  That  all  laws  and  parts  of  laws  incon-istent 
with  the  foregoing  provisions  be  and  the  same  are  hereby 
repealed. 

►Sec.  5.  That  this  act  shall  take  effect  on  and  after  the 
first  day  of  August,  eighteen  hundred  and  seventy  four. 

By  the  word  "print,"  as  used  in  the  said  act,  is  meant 
any  device,  picture,  word  or  words,  figure  or  figures,  (not 
a  trademark,)  impressed  or  stamped  directly  upon  the 
articles  of  manufacture,  to  denote  the  name  of  the  manu- 
facturer or  place  of  manufacture,  style  of  goods^  or  other 
matter. 

By  the  word  "label," as  therein  used,  is  meant  a  sl"p  or 
piece  of  paper,  or  other  material,  to  be  attached  in  any 
manner  to  manufactured  articles,  or  to  bottles,  box»>s,  and 
packages  containing  them,  and  bearing  an  inscription,  (not 
a  trademark,)  as,  for  example  :  the  name  of  the  manu- 
facturer or  the  place  of  manufacture,  the  quality  of  goods, 
directions  for  use,  &c. 

By  the  words  "  articles  of  mannfacture" — to  which  such 
print  or  label  is  applicable  by  said  act — is  meant  all 
vendible  commodities  produced  by  hand,  machinery,  or 
art. 

But  no  such  print  or  label  can  be  registered  unless  it 
properly  belongs  to  an  article  of  commerce,  and  be  as  above 
defined;  nor  can  the  same  be  registered  as  such  print  or 
label  when  it  amounts  to  a  lawful  trademark. 

To  entitle  the  owner  of  any  such  print  or  label  to  register 
the  same  in  the  Patent  Office,  it  is  necessary  that  five 
copies  of  the  same  bo  filed,  one  of  \vhich  copies  shall  be 
certified  under  the  seal  of  the  Commissioner  of  Patents, 
and  returned  to  the  registrant. 

The  certificate  of  such  registration  will  continue  in  force 
for  twenty-eight  years. 
131 


% 


''K?vT  *:  "  ■ 


n 

ft 


4S. 


On  ICIAL  IA)liMS. 


I'lio  fot'  for  registiMtloii  of  a  print  or  label  is  six  dollars, 
to  1)0  paid  in  the  same  maiinor  as  fees  for  patents. 

The  benelits  of  this  act  seem  to  be  confined  to  citizens, 
or  residents,  of  the  United  States. 


i'     ' 

; 


i  J) 


i 

It 

I"; 
I 

% 


1 


FORM    OF   APPLICATION  FOR  REGISTRATION 
OF  PRINTS  AND  LABELS. 

[Making  necessary  changes  to  suit  each  case.] 

[for  an  individual.] 

To  the  Commissioner  of  Patents  : 

The  undersigned,  A,  B.,  of  the  city  of  Brooklyn,  county 
of  Kings,  and  State  of  New  York,  and  a  citizen  of  the 
United  States,  [or  resident  therein,  as  the  ease  may  be,] 
hereby  furnishes  five  copies  of  a  label  [or  print,  as  tlic  rase 

may  he,'\  to  be  used  for ,  of  which  he  is  the  sole  jiro- 

prietor. 

The  said  label  [or  "print"]  consists  of  the  words  and 
figures,  as  follows,  to  wit  :  [Description.] 

And  he  hereby  requests  that  the  said  jirint  [or  label]  be 
registered  in  the  Patent  Office,  in.  accordance  with  the  act 
of  Congress  to  that  effect,  approved  June  18,  1874. 


Brooklyn,  N.  Y.,  Atigtnt  1,  1874. 


Proprietor. 


[for  a  corporation.] 

To  the  Commissioner  cf  Patents: 

The  applicant,  a  corporation  created  by  authority  of  the 
laws  of  the  State  of  New  York,  [or  other  authority,  as  the 

'Case  may  be,]  and  doing  business  at ,  in  said  State, 

hereby  furnishes  five  copies  of  a  label,  [or  "  print,"  as  the 

case  may  it',]  to  be  used  for ,  of  which  it  is  the  sole 

proprietor. 


.F  :  m 


OmriAr  Forms. 


483 


Tlio  said  lal)ol  consists  of  tlie  words  and  fit^nri'S  as  fol- 
lows,  to  wit  : [Doscriptioii.] 

And  it  is  hereby  requested  that  the  same  Udiel  [or print] 
l)e  rei^istered  in  the  Patent  Of'rice,  in  accordance  with  the 
act  of  Congress  to  that  effect,  approved  .Inne  IS,  1874. 

Witness  the  seal  of  said  corporati'jn  at , ,  1874. 

[l.  s.] 


President,  [or  otlier  officer,  ] 


NOTK. 


The  registration  of  copyright  matter  is,  by  law,  under 
the  control  of  the  Librarian  of  Congress,  at  Washington. 
At  the  time  of  the  enactment  of  the  trademark  hiw  of 
July  8,  1870,  it  was  the  custom  of  the  Librarian  of  Con- 
gress to  enter,  under  the  provisions  of  the  copyright  law, 
labels  and  prints  of  commerce,  many  of  Avhidi  embraced 
legal  trademarks.  Notwithstanding  the  exi>stence  of  a  sepa- 
rate statute  iu  1870  for  the  registration  of  trademarks,  the 
Librarian  of  Congress,  in  entering  labels  and  prints  of 
commerce,  gave  a  semblance  of  })rotection  to  many  trade- 
marks, of  which  the  labels  and  prints  entered  by  him  were 
the  mere  vehicles.  To  remedy  this  difficulty  Avas  the  ob- 
ject of  the  amendment  to  the  copyright  law  of  .June  18, 
1874,  referred  to  Jierein  as  the  act  for  the  registration  of 
prints  and  labels.  By  this  amendatory  act  the  Lilirarian 
of  Congress  is  restricted,  in  the  registry  of  copyright  mat- 
ter, to  pictorial  illustrations  or  works  connected  Avith  the 
fine  arts,  and  is  prohibited  from  registering  labels  or  prints 
designed  to  be  used  for  any  other  articles  of  manufacture, 
i.  e.,  articles  of  commerce.  These  are  now  registrable  at 
the  Patent  Office  ;  while  matter  properly  coming  within 
the  definition  of  copyright  subject  matter,  as  contained  in 
the  act  of  June  18,  1874,  is  registrable  at  the  office  of  the 
Librarian  of  Congress.* 

*The  act  of  Congress  of  .Tunc  18.  1874,  is  to  be  regarded  as  an 
amcnduicut  of   tlie  copyright  laws.       To  acquire  a  copyright 


434 


Treaties  and  Conventions. 


TREATIES  AND   CONVENTIONS. 


I  i.-' 


I.i    A' 

1^ 


I  ^ 


RUSSIA,  1868. 

Article  respecting  trademarks,  additional  to  the  Treaty  of  Nav- 
igation and  Commerce  of  Decembei*  0-18,  1832,  between  tlie 
United  States  of  America,  and  His  Majesty  the  Kmperor  of 
Russia,  concluded  at  Wasiij  ""*^on,  January  27,  I8t>8;  ratiti- 
cation  advised  by  Senate,  July  2,"),  1 8(58;  rati  lied  by  President, 
August  14,  1808;  ratificaticms  exchanged  at  St.  Petei-sburgh, 
September  21,  1808;  proclaimed,  Octoljer  15,  1808. 

The  United  States  of  America  and  Ilis  Majesty  the  Em- 
peror of  all  the  Russias,  deeming  it  advisable  that  there 
should  be  an  additional  article  to  the  treaty  of  commerce 
between  them  of  the  6-1 8th  December,  1832,  have  for  tliis 
purpose  named  as  their  plenipotentiaries,  the  President  of 
the  United  States,  William  11.  Seward,  Secretary  of  the 
State;  and  His  Majesty  the  Emperor  of  all  the  Russias, 
the  Privy  Councillor,  Edward  de  Stoeckl,  accredited  as  his 
Envoy  Extraordinary  and  Minister  Plenipotentiary  to  the 
United  States. 

And  the  said  Plenipotentiaries,  after  an  examination  of 
their  respective  full  powers,  which  were  found  to  be  in 
good  and  due  form,  have  agreed  to  and  signed  the 
following 

Additional  Article. 

The  high  contracting  parties,  desiring  to  secure  complete 
and  efficient  protection  to  the  manufacturing  industry  of 
their  respective  citizens   and   subjects,   agree    that    any 

in  any  print  or  label  deposited  in  the  Patent  OtRce,  it  is  essential 
that  the  title  of  the  print  or  label  be  first  deposited  in  luu-snance 
of  tiie  provisions  of  tiie  lie  vised  Statutes,  concerning  copyrights. 
1877.  U.  S.  Circuit  Court,  Southern  Dist.  of  N.  Y.,  Jiarsh  ». 
Warren,  4  Am.  Law  Times  li.  {N.  *'.)  120. 


TnKATlKSi    AND    COXVKNTIOX;*, 


■V^t 


of  NrtV- 
weeu  the 
ipevoi"  of 
lib;  ratiti- 
Mrsidoiit, 
ei-sburgh, 

r  the  Em- 
liat  tliere 
'ommorce 
e  for  this. 
sulent  of 
vy  of  tlio 
Russuis, 
ed  as  lu» 
|ary  to  the 

lination  of 
to  he  in 
tgued    the 


|[?  complete 
^dvistry  of 
I  that    any 

is  cssciitiivl 

puvsuance 

|copyriglits. 


f'onntvifcithiLi:  in  (iue  of  the  two  ctMiiitrics,  of  tliv  ti-;i(lc- 
inarks  alHxed,  in  the  otlicr  on  nKTcliaiidisc,  \o  show  ils 
origin  and  (juality,  sliaH  he  strictly  jjrohihited  and  i\- 
j>ressod,  and  shall  give  gntiind  for  an  action  of  (hnnagcs  in 
favor  of  the  ii)jiirc'<l  party,  to  he  prost-ciUed  in  tlu-  courts 
of  the  country  in  which  the  eounterft'it  shall  he 
proven. 

The  trademarks  iu  which  the  citizens  or  suhjccts  of  one 
of  the  two  eouutries  may  wish  to  secure  the  right  of 
property  in  the  other,  must  he  lodged  exclusively,  to  wit: 
the  marks  of  citizens  of  the  United  States  in  the  I)<^'part- 
luent  of  Manufacttn-es  and  Inland  Commerce  at  St.  I'eters- 
hurgh,  and  the  marks  of  Russian  suhjects  at  the  I'atent 
Office  at  Wasliington. 

This  additional  article  shall  be  terminahle  hy  either  ])ar- 
ty,  pursuant  to  the  twelfth  article  of  the  treaty  to  which 
it  is  an  addition.*  It  shall  he  ratitied  by  the  President,  by 
and  wnth  the  advitie  and  consent  of  the  Senate  of  the  Uni- 
ted States,  and  by  His  JNIajesty  the  Emperor  of  all  the 
Russias,  and  the  resix^ctivcM'atifications  of  the  same  shall 
be  exchanged  at  St.  Petershurgh  within  nine  months  from 
the  date  hereof,  or  sooner  if  ]K)ssible. 

In  faith  wliereof  the  respective  Plcnipotentuiries  liave 
signed  the  present  additional  article  in  duplicate,  and  atlix- 
ed  thereto  the  seal  <^)f  their  arms. 

Done  at  Washington  the  twenty-seventh  day  of  Janii- 


*The  twelfth  article  of  the  treaty  of  December  C-18,  1832,  is 
as  follows  : 

AllTICLE    XII. 

Tlie  prcseut  tixMity,  of  wliicli  iJie  «'il't;ct  sliall  extcml  in  like 
nianner  to  the  Kingilom  of  Poliind,  so  far  as  the  siiniciimy  be  a])- 
pliojiblp  tliereto,  still  contiiuie  in  force  until  tiic  iirst  <iay  of  Jan- 
uary, in  the  year  of  our  J»r<l  one  thousand  ei<>ht  hundred  and 
thirty-nine,  and  if,  one  year  JK'fori' tliat  day,  one  of  the  liigli  con- 
tracting parties  shall  not  liave  announced  to  the  other,  by  an  olli- 
cial  notilication.  its  intention  to  nrr<'st  the  operation  tliereof,  tliis 
treaty  sliaH  remain  obligatory  one  year  l)eyond  that  day.  and  so 
on  until  theexpiration  of  the  year  which  .slmll  aunmenee  after 
tlie  date  of  a  siniikr  notilication. 


48r. 


Treaties  Ai\d  Coxvextioxs. 


MM 


i:t 


-M. 


tr 


ary,  in  the  year  of  Grace  one  tUous;uul  eiglit  lunidretl  an<1 

sixty-eight. 

"VViLi-iAM  II.  Seavakd,  [L.  S.] 

Edavaku  Dii  Stoeckl,  [L.  S.] 


Declaration  by  ancl  between  the  United  States  and  tlie  Empire 
of  Russia,  respecting  previous  treatj'  stii)uhitions  iu  regard  to 
trademarks.     Signed  March  10-28,  1874. 

By  the  Pp.e.siuent  of  tuk  Uxited  States  of  America. 

A  PRfX^LAMATIOX. 

Whereas  a  Deehxration  concerning  trademarks,  for  the 
purpose  of  tletining  and  rendering  more  efficacious  the 
stipuhitions  containeil  in  the  additional  article  of  the  L'Tth 
of  Jaiuiary,  1 808;,  to  the  treaty  of  Commerce  and  Xavigri- 
tion  between  the  Uniteil  States  and  the  Emperor  of  Russia 
of  the  18rh  of  December,  1882,  was  concluded  and  signed 
at  Saint  Petersburg  by  their  respective  plenijjotenliaries 
on  the  lGth-28th  day  of  March,  1874,  the  original  of  which 
Declaration  is  word  for  word  as  follows  : 

DECLAKATIOX. 

The  Government  of  the  United  States  of  America  and 
the  Government  of  His  Majesty  the  Emperor  of  all  the 
Eussias  having  recognized  the  necessity  of  defining  and 
rendering  more  efficacious  the  stipulations  contaihed  in  the 
additional  article  of  the  15th-27th  January,  1808,  to  the 
Treaty  of  Commerce  and  Navigation,  concluded  between 
the  United  States  of  America  and  Russia,  on  the  Gth-lJith 
December,  1832,  the  undersigned,  duly  authorized  to  that 
effect,  have  agreed  upon  the  following  arrangements  : 

Article  I. 

With  regard  to  marks  of  goods  or  of  their  packages, 
ancl  also  Avith  regard  to  marks  of  manufacture  and  trade, 
the  citizens  of  the  United  States  of  America  shall  enjoy  in 


if'' 


"TfTr 


TllEATIES   AXD    COXVTCXTIOXS. 


487 


Russia,  and   Russian    subjects  sliall  enjoy  in    tlic  United 
States,  the  same  protection  as  native  citizens. 

Articlk  ir. 

The  preceding  article,  wliich  shall  come  immediately  Into 
operation,  sliall  be  considered  as  forming-  an  inteoral  ]):irt 
of  the  Treaty  of  the  0th-18th  December,  ] 8 ;;•_',  !"i„l  shall 
have  the  same  force  and  duration  as  the  said  1'reatv. 

In  faith  whereof  the  undersigned  have  drawn  up  and 
signed  the  present  Declaration,  and  alHxed  thereto  their 
iseals. 

Done  in  duplicate  in  the  English  and  Russian  languages 
at  St.  Petersburg  this  lGth-28th  day  of  .March,  iHiZ 


[seal.] 
[seal.] 


Maiisiiai.l  Jkweli,. 
Gonn  wAcow. 


And  whereas  the  said  Declaration  has  been  duly  i-atifie.l, 
and  the  same,  by  virtue  of  a  decree  of  His  Imperial  ."Majes- 
ty the  Emperor  of  all  the  Russias,  has  gone  into  effect  in 
the  Empire  of  Russia  : 

Now,  therefore,  I,  Ulysses  S.  Grant,  President  of  the 
United  States,  have  caused  the  said  Declaration  to  be  made 
public,  to  the  end  that  the  same,  and  every  clause  and  jiart 
thereof,  may  be  observe<l  and  fulfilled  wiUi  good  faith  by 
tlie  United  States  and  the  citizens  thereof. 

In  witness  whereof  I  have  hereunto  set  my  hand  and 
caused  the  seal  of  the  United  States  to  be  atMxe.l. 

Done  at  the  city  of  Washington  this  twenty-fourth  dav 

of  November,  in  the  year  of  our  Lord  one  tlioii- 

[seal.]    sand  eight  hundred  and  seventy-four,  and  of  the 

Independence  of  the   United  States  of  America 

the  ninety-ninth. 

U.  S.  Grant. 
By  the  President : 

IIamiltox  Fish, 

Secretary  of  State.  \ 


}i ;[?: 


pi?Tr 


hi- 

Pi  k 


Hi 


&i 


I'  '! 
1^  i9 


^1» 


ii^ 


If..  ifg' 


•P.>  TlIEATIKS    AND   CONVENTIONS. 


BELGIUM,  ]8G8. 

Additionai.  Ahtk'I.k  to  tlie  treaty  of  commerce'  iind  iiivvigatjon 
of  July,  17,  I808,  botAVceu  the  United  States  of  Americii  and 
His  Majesty  the  Kin<r  of  tlie  IJely-ians,  relative  to  trademarks; 
concluded  at  Brussels  December  20,  18(>8;  ratilieation  ad- 
vised by  Senate  April  12,  1801);  ratified  by  President  April 
18,  18Gi);  ratilicat ions  exchanged  at  Brussels  June  19,  1809; 
proclaimed  July  <J0,  1809. 

The  Prosident  of  the  United  States  of  America,  and  His 
Majesty  the  King  of  the  Belgians,  deeming  it  advisable 
that  tliere  should  be  an  additional  article  to  the  treaty  of 
connnerce  and  navigation  of  the  17th  July,  1858,  have  for 
this  purpose  named  as  their  Plenipotentiaries,  namely: 

The  President  of  the  United  States,  Henry  Shelton 
Sanford,  a  citizen  of  the  United  States,  their  Minister 
Resident  near  His  Majesty  the  King  of  the  Belgians;  and 
His  Majesty  the  King  of  the  Belgians,  the  Sieur  Jules 
Vander  Stichelin,  Grand  Cross  of  the  Order  of  the  Dutch 
Lion,  &c.,  &c.,  &c.,  his  Minister  of  Foreign  Affairs.  Who, 
after  having  communicated  to  each  other  their  full  powers, 
have  agreed  to  and  signed  the  following 

Additional  Article. 

The  high  contracting  parties,  desiring  to  secure  complete 
and  efficient  protection  to  the  manufacturing  industry  of 
their  resjjective  citizens,  agree  that  any  counterfeiting  in 
one  of  the  tAVO  countries  of  the  trademarks  atKxed  in 
the  other  on  merchandise,  to  show  its  origin  and  (juality, 
shall  be  strictly  prohibited,  and  shall  give  ground  for  an 
action  of  damages  in  favor  of  the  injured  party,  to  be 
prosecuted  in  the  courts  of  the  country  in  which  the 
counterfeit  shall  be  proven. 

The  trademarks  in  which  the  citizens  of  one  of  the  two 
countries  may  wish  to  secure  the  right  of  j)roi)ei-ty  in  the 
other,  must  be  lodged,  to  wit:  the  marks  of  citizens  of  the 
United  States  at  Brussels,  in  the  Oflice  of  the  Clerk  of  the 


TlIKATIES    AND   CONVENTIONS. 


-IS) 


Ti'i!»iiii;il  of  CuimiK'ice;  and  the  marks  of  IJulgiaii  citi/cns 
nt  the  Patent  Ortlcc,  in  Washington. 

It  is  iin<k'r8too<l  that  if  a  trademark  has  bccomo  public 
property  in  the  country  of  its  origin,  it  shall  be  equally 
free  to  all  in  the  other  country. 

This  additional  article  shall  have  the  same  duration  as 
the  before-mentioned  treaty  of  the  17th  July,  1858,  to  which 
it  is  an  addition.*  The  ratifications  thereof  shall  be  ex- 
changed in  the  delay  of  six  months,  or  sooner  if  possible. 

In  faith  whereof,  the  res))ective  Plenipotentiaries  have 
signed  the  same,  and  afHxed  thereto  their  seals. 

Done  at  Brussels,  in  duplicate,  the  20th  of  December, 
1868. 

H.  S.  Sanford.  [L.  S.] 

Jules  Vander  Sticiielix.  [L.  S.] 


li'i! 


BELGIUM,  1875. 

Treaty  between  the  United  States  of  America  and  His  ]\[ajesty 
the  King  of  the  Belgians,  concerning  commerce,  navigation 
and  trademarks  ;  conchided  JIarcli  8,  1875  ;  ratification 
advised  by  Senate  Marcli  10,  1875;  ratilied  by  President 
March  16,  1875;  ratified  by  King  of  the  Belgians  .Tune  10, 
1875;  ratifications  exchanged  at  Brussels  .June  11,  1875;  pro- 
claimed June  20,  1875. 

The  United  States  of  America  on  the  one  part,  and  Ilis 
Majesty  the  King  of  tlie  Belgians  on  the  other  part,  wisli- 

*  Tlie  duration  of  the  treaty  of  the  17ch  July,  1858,  is  fixed  by 
the  following  article  tliereof.  viz: 

Article  XVII. 

The  present  treaty  shall  be  in  force  during  ten  years  from  the 
date  of  tlie  excli:,nge  of  ratifications,  (ratifications  excliangcd 
April  10,  1850,)  and  until  tlio  exiviialion  of  twelve  nu)ntlis  after 
cither  of  the  high  contraciing  parties  shall  have  ainiounced  lo 
the  other  its  intention  to  terminate  the  operation  tliercuf,  eacli 
party  reserving  to  itself  the  right  of  making  such  declaration  to 
the  (/thcr  at  tlie  end  of  the  ten  years  above  mentioned,  and  it  is 
agreed  that,  after  the  expiration  of  the  twelve  months  of  prolonga- 
tion, acconled  on  both  sides,  tliis  treaty  and  all  its  stipulations 
t-hall  cease  lu  be  in  force. 


l! 


4:;.) 


Treaties  and  Conventions. 


3S  ■ 
l«4 


'li 


4 


r 


i    ' 


iii<4  to  ivgulate  in  ii  formal  manner  their  rcciprociil  relations 
of  eonniierce  Ami  navigation,  and  fnrther  to  strenjjftlien, 
through  the  development  of  their  interests,  respectively, 
the  bonds  of  friendship  and  good  understanding  so  hai)pily 
estaldishc'd  between  the  governments  and  people  of  the 
two  countries;  and  desiring  with  this  view  to  concdude, 
by  common  agreement,  a  treaty  establishing  conditions 
equally  advantageous  to  the  commerce  and  navigation  »»f 
both  States,  have  to  that  effect  api)ointed  as  their  Pleni- 
potentiaries, namely:  The  President  of  the  United  States, 
Hamilton  Fish,  Secretary  of  State  of  the  United  States, 
and  Ilis  Majesty  the  King  of  the  Belgians,  Maurice  Del- 
fosse,  Commander  of  the  Order  of  Leopold,  ifcc,  &c.,  his 
Knvoy  Extraordinary  and  Minister  Plenipotentiary  in  the 
United  States:  who,  after  having  conniiunicated  to  each 
other  their  full  powers,  ascertained  to  be  in  good  and 
proper  form,  have  agreed  to  and  concluded  the  following 
articles: 


Article  XV. 

The  high  contracting  parties,  desiring  to  secure  com- 
plete and  efficient  protection  to  the  manufacturing  industry 
of  their  respective  citizens,  agree  that  any  counterfeiting 
in  one  of  the  two  countries  of  the  trademarks  affixed  in 
the  other  on  merchandise,  to  show  its  origin  and  <piality, 
shall  be  strictly  prohibited,  and  shall  give  ground  for  an 
action  of  damages  in  favor  of  the  injured  party,  to  be 
prosecuted  in  the  courts  of  the  country  in  which  the 
counterfeit  shall  be  proven. 

The  trademarks  in  wliich  the  citizens  of  one  of  the  two 
countries  may  wish  to  secure  the  right  of  property  in  the 
other,  nmst  be  lodged,  to  wit:  the  marks  of  citizens  of  the 
United  States,  at  Brussels,  in  the  office  of  the  clerk  of  the 
tribunal  of  commerce,  and  the  marks  of  Belgian  citzens, 
at  the  Patent  OfHce  in  Washington. 

It  is  understood  that  if  a  trademark  has  become  public 


IK;-  i 


T^T 


Trkaties  axd  Coxvextions. 


ni 


Bcure  corn- 


property  in  tlio  country  of  its  origin,   il  shall  be  c«iii;il]y 
I'reo  to  all  in  the  other  country. 

AuTicr.E  X\'I. 

The  present  treaty  sliall  be  in  force  duriii'f  ten  vears 
from  tlio  cbxte  of  the  excliunge  of  tlie  ratitirations,  an<l 
until  the  expiration  of  twelve  months  after  cither  of  tlio 
high  contracting  particss  shall  have  amioiinccd  to  the  otlici- 
its  intention  to  terminate  the  ojHTation  tlicrcM/f  ;  i^ach 
party  reserving  to  itself  the  right  of  making  such  dcclai-- 
ation  to  the  other  at  the  end  of  the  ten  yi^ars  above  men- 
tioned ;  and  it  is  agreed  that  after  the  expiration  of  tlur 
twelve  months  of  prolongation  accorded  on  l)oth  sides, 
this  treaty  and  all  its  stipulations  shall  cease  to  be  in  force. 

Article  XVII. 

This  treaty  shall  be  ratified,  and  the  ratifications  shall 
be  exchanged  at  Brussels  within  the  term  of  nine  months 
after  its  date,  or  sooner  if  possibe. 

In  faith  whereof,  tlie  respective  Plenipotentiaries  have 
signed  the  present  treaty  in  dtiplicate,  and  have  affixed 
thereto  their  seals  at  Washing-ton,  the  eighth  day  of 
March,  eighteen  hundred  and  seventy-five. 

Hamilton  Fish.        [seal.] 
Maukice  Delfosse.  [seal.  I 


FRANCE,  18G9. 

Convention  between  the  United  States  of  America  and  His  Ma- 
jesty the  Emperor  of  tlie  Frencli,  cnuoeriiiiijf  trudcniiu-ks; 
conckidcid  Ajjril  Ifl,  1861)  ;  nililicatioii  advi:?('d  by  Senate 
April  19,  ISG'J  ;  ratified  l)y  President  April  80,  1800  ;  nilifi- 
cations  exchanged  at  Washiug-ton  July  3,  18G9  ;  proclaimed 
JulyO,  1809. 

The  United  States  of  America  and  Ilis  Majesty  the  Em- 
peror of  the  French,  desiring  to  secure  in  their  rospectivG 


wr^ 


,1'\ry 


Tin;  AT  IKS  A.\n  C(>nvi:ntio\s. 


lit 
1 


If  iV 


>  \ 


IcrritoriHs  a  tjuarantee  of  property  in  tni'liinarks,  liavc  ro- 
solved  to  coik'IikU'  a  special  con  vent  ion  I'or  this  purpose, 
and  IiaviMianied  as  their  IMenipotentiaries  :  the  President 
of  the  United  States,  Hamilton  Fish,  Secretary  of  State, 
and  His  Majesty  the  Knvperor  of  the  French,  J.  JJerthemy, 
Commander  of  tlio  imperial  Order  of  tlio  Leujion  of  Honor, 
<fcc.,  tfec,  «fcc.,  aocredited  as  his  Envoy  Extraordinary  and 
jNlinister  Plenipotentiary  to  the  United  States  ;  and  the 
said  Plenipotentiaries,  after  an  examination  of  tlieir  re- 
spective full  powers,  which  were  found  to  be  in  j^ood  and 
due  form,  have  agreed  to  and  signed  the  following  ar- 
ticles : 

Article  I. 

Every  reproduction  in  one  of  tlie  two  countries  of  trade- 
marks affixed  in  tlie  other  to  certain  merchandise  to  ]»rove 
its  origin  and  quality  is  forbidden,  .and  shall  give  ground 
for  an  action  of  damages  in  favor  of  the  injured  ])arty,  to 
be  i)rosecuted  in  the  courts  of  tlie  country  in  wliich  tur 
counterfeit  shall  be  proven,  just  as  if  the  plaintiff  were  a 
subject  or  citizen  of  that  country. 

The  exclusive  right  to  use  a  tr.-idemark  for  the  benefit  of 
citizens  of  the  United  States  in  France,  or  of  French  sub- 
jects in  the  territory  of  the  United  States,  cannot  exist  for 
a  longer  period  than  that  fixed  by  tlie  law  of  the  country 
for  its  own  citizens. 

If  the  trademark  has  become  public  pvoi)erty  in  the 
country  of  its  origin,  it  shall  be  equally  free  to  all  in  the 
other  country. 

Article  II. 

If  the  owners  of  trademarks,  residing  i'"  '  i  of  the 
two  countries,  wish  to  secure  their  rights  ii  wther  conn- 

try,  they  must  deposite  duplicate  copies  ol  ose  m;i'ks  in 
the  Patent  O^ce  at  Washington,  and  in  the  clerks  office 
of  the  tribunal  of  commerce  of  the  Seine,  at  Paris. 

Article  III. 
The  present  arrangement  shall  take  effect  ninety  days 


I  ■  m  ^ 


|lt/.iiv« 


I  I 


w^ 


Ti:i:atii:s   axd  Convextfoxs. 


433 


after  tlic  cxcliaiii^v  of  ratilicalions  l»y  tlic  two  <,'()V('ni- 
iiu'iits,  and  shall  cMuitiiiiK-  in  force  fn-  ten  yciii's  from  this 
date. 

In  case  neither  of  the  two  liitfh  contract Ini,'  jiarties  (,'ives 
notice  of  its  intention  to  discontinue  this  convention, 
twelve  months  before  its  expiration,  it  shall  remain  in  forre 
for  (me  year  from  the  time  that  either  of  the  hi^h  coii- 
tractinij^  parties  announces  its  discontinnance. 

Articlk  IV. 
The  ratifications  of  this  present    arranijcment  shall  l)e 
exchan;;ed  at  Washin^jton  within  ten  months,  or  sooner  if 
possihle. 

In  faith  whereof,  the  respective  Plenipotentiaries  hav(' 
signed  the  present  convention  in  duplicate,  and  allixed 
thereto  tlio  seal  of  their  arms. 

Done  at  Washinj^ton,  the  sixteeenth  day  of  April,  in  the 
year  of  our  Lord  one  thousand  eiirht  iiundred  an<l  sixty- 
nine. 

Hamiltox  Fish.   [skal.J 
Bertiiemy.  [seal.] 


AUSTRIA,  1871. 

Convention  between  the  United  States  of  America  and  His 
Majesty  the  Emperor  of  Austria,  relative  to  trademarks:  con- 
cluded at  Vienna  November  25,  1871;  ratitication  advised 
by  Senate  January  18,  1873;  ratilied  by  President  .bniuary 
27,  1873;  ratiticutions  exchanged  at  Vienna  April  22,  1873; 
proclaimed  .June  1,  1873. 

The  United  States  of  America  and  His  ]\rajesty  the  Em- 
peror of  Austria,  King  of  Bohemia,  ttc,  and  Aj)ostolic 
King  of  Hungary,  desiring  to  secure  in  tlieir  respective 
territories  a  guarantee  of  property  in  trademarks,  have 
resolved  to  conclude  a  special  convention  for  this  j)urpose, 
and  have  named  as  their  Plenipotentiaries: — 


ffm 


4:)  4 


Treaties  axd  Coxventioxs, 


m 


1 1 

Ir  "f" 

■  i  w 

'4 


r  r-»»- 

't  ■  t  ■  i 

"^^W 

•■    \v 

f.W 

The  Prcsidenf.  of  the  Unift'd  States  of  America,  Jolm 
Jay,  (heir  Envoy  Extraordinary  and  ^Minister  I'ienipoten- 
tiary  from  the  United  States  to  His  Imperial  and  lloyal 
Apostolirr  IMajesty;  and  His  jMajesty  the  Emjjeror  of 
Austria  and  Apostolie  King  of  IIunt;-ary,  the  Count  .Julius 
Andnissy  of  Csik  Szent  Kiriily  and  Ivraszna  Ilorka,  His 
Majesty's  Privy  Counsellor  and  Minister  of  the  Imperial 
House  and  of  Foreign  Affairs,  Grand  Cross  of  the  Order 
of  St.  Stephen,  &e.,  Ac,  <fcc.,  who  have  agreed  to  sign  the 
following  articles: 

Article  T, 

Every  reproduction  of  traaomarks  which,  in  the  countries 
or  territories  of  the  one  oi:  the  contracting  parties,  are 
affixed  to  certain  merchandise  to  prove  its  origin  and 
quality,  is  forbidden  in  the  countries  or  territories  of  the 
other  of  the  contracting  parties,  and  shall  give  to  the 
injured  party  ground  for  such  action  or  proceedings  to 
prevent  such  reproduction,  and  to  recover  damages  for 
the  same,  as  may  he  authorized  by  the  laws  of  the  country 
in  which  the  counterfeit  is  proven,  just  Jis  if  the  jilaintiff 
were  a  citizen  of  that  country. 

The  exclusive  right  to  use  a  ti'ademark  for  the  benefit  of 
citizens  of  the  United  States  in  the  Austro-IIungariati 
Empire,  or  of  citizens  of  the  Austro-IIui  garian  Monarchy 
in  the  territory  of  the  United  States,  cannot  exist  for  a 
longer  period  than  that  fixed  by  the  law  of  the  country 
for  its  own  citizens.  If  the  trademark  lias  become  public 
property  in  the  country  of  its  origin,  it  shall  be  equally 
free  to  all  in  the  countries  or  territories  of  the  other  of  the 
two  contracting  parties. 

Article  II. 

If  the  owners  of  trademarks,  residing  in  the  countries 
or  territories  of  the  one  of  the  contracting  parties,  wish 
to  secure  their  I'ights  in  the  countries  or  territories  of  the 
other  of  the  contracting  parties,  they  must  deposit  dupli- 
cate copies  of  those  marks  in  the  Patent  Office  at  Wash- 


"PT 


Treaties   axd  Cowextioxs. 


'IX, 


ington,  and  in  the  Chambers  of  Commerce  an<l  Trade  i:i 
Vienna  and  Pesth. 

Auticlt:  III. 

The  i)resent  arrangement  shall  take  effect  ninety  days 
after  the  exchange  of  ratilieations,  and  shall  continue  in 
force  for  ten  years  from  this  date. 

In  case  neither  of  the  high  contracting  parties  gives 
notice  of  its  intention  to  discontinue  this  convention 
twelve  months  before  its  expiration,  it  shall  remain  in 
force  one  year  from  the  time  that  either  of  the  hi^-h  con- 
tracting  parties  announces  its  discontinuance. 

Article  IV. 

The  ratifications  of  this  present  convention  shall  be  ex- 
changed at  Vienna  within  twelve  months,  or  sooner  if 
possible. 

In  faith  whereof  the  respective  PIeni|)otentlaries  have 
signed  the  jn-esent  convention  as  well  in  English  as  in  Ger- 
mat  and  Hungarian,  and  have  altixed  thereto  their  re- 
ispective  seals. 

Done  at  Vienna  the  twenty-fifth  day  of  X()venil)er,  in 
the  year  of  our  Lord  one  thousand  eight  hundred  and 
seventy-one,  in  the  ninety-sixth  year  of  the  Independence 
of  the  United  States  of  America,  and  in  the  tv.-enl  y-tliird 
year  of  the  reign  of  His  Imperial  and  Royal  Apostolic 
Majesty. 

JOIIX  J.VY.    [l.   s.] 
AXDUASSY.    [l.   s.] 


::i:;| 


GERMAN  EMPIRE,  1871. 

CoN'VBNTtON  between  the  United  States  of  America  and  tlie  Ger- 
man Empire,  respecting  Consuls  and  Tra(bMnarks ;  conchidcd 
at  BerHn  December  11,  1871  ;  ratiiivition  advised  by  Senate 
January  18,  1873  ;  ratified  by  President  January  20.  1872  ; 
ratifications  exchanged  at  Berlin  April  29,  1872  ;  proclaimed 
June  1,  1872. 

The  President  of  the  United  States  of  America  and  His 


if" 


40n 


Tr.EATIES    AXD   COXVEXTIOXS. 


t'-i-   'i- 


Kh   -i 


. 


K    ■■    1 


^  Iv,  •^: 


m- 


lii   <R' 


If'  1 


ii: 


1 


■  Sli 


IM.'ijesty  tho  Emporor  of  Germany,  King  of  Prussia,  in  tlic 
iianic  of  tlie  German  Empire,  led  by  the  wisli  to  driliio  the 
rijrlits,  privileges  and  immunities,  and  duties  of  iheres])ect- 
ive  Consular  Agents,  have  agreed  upon  the  coiK-'usion  of  a 
Consular  Convention,  and  for  that  purpose  have  ai»i)oin1ed 
their  IMenipotcntiaries,  namely  : 

The  T'rcsident  of  tlie  United  States  of  Ameriea,  (Teorge 
Bancroft,  P^nvoy  Extraordiiiary  and  3Iinister  l*lenipoten- 
tiary  from  the  said  States,  near  His  Majesty  the  Emperor 
of  Germany  ;  His  Majesty  the  Emperor  of  Germany,  King 
of  Prussia,  Bernard  Konig,  His  I*rivy  Councillor  of  Lega- 
tion ;  who  have  agi'eed  to  and  signed  the  following  arti- 
cles : 

**!#  ^  ^  ^  lie  4i 

*l»  *|*  T*  *^  »j*  f* 

Article  XVH. 

With  regard  to  tho  marks  of  labels  of  goods,  or  of  their 
packages,  and  also  with  regard  to  pattei-ns  and  marl:?,  of 
manufacture  and  trade,  the  citizens  of  Germanj-  shall  en- 
joy in  the  United  States  of  Ameriea,  and  American  citi- 
zens shall  enjoy  in  Germany,  the  same  protection  as  native 
citizens. 

Article  XVHI. 

The  present  convention  shall  remain  in  force  for  the 
space  of  ten  years,  counting  from  the  day  of  the  exchange 
of  the  ratifications,  which  shall  be  exchanged  at  I3erlin 
within  the  period  of  six  months. 

In  case  neither  party  gives  notice,  twelve  months  before 
the  expiration  of  the  said  period  of  ten  years,  of  its  inten- 
tion not  to  renew  this  convention,  it  shall  rem.iin  in  force 
for  one  year  longer,  and  so  on,  from  year  to  year,  until  the 
ex])iration  of  a  year  from  the  day  on  which  one  of  the  par- 
ties shall  have  giveji  such  notice. 

In  faith  whereof  tho  Plenipotentiaries  have  signed  and 
sealed  this  Convention.  Berlin,  tlio  11th  of  December,  1871. 

[l.  s.]  Geo.  Bancroft, 

[l.  s.]  B.  Koexig. 


Treaties  and  Conventions. 


407 


ENGLAND. 


We  are  informed  that  a  treaty  is  being  negotiated 
between  England  and  the  United  States. 


32 


■ppf 


WW 


I  ■• 


TABLE    OF    CASES. 


THE  PIGDBE8  IlEPEU  TO  THE  SECTIONS, 


Abadie  v.  Berha,  1144 
Liicroix  v.  U4-' 
t).  Pnidhon,  hoq 
».  Pnulon,  1141 
Ahbott  V.  Bakers'  &  Confec- 
tioners'Tea  Association.  .-{89 
Acliard,  Desire  Midiel  «.  1128 
Ainswortli  v.  VValniesIey 

All,  ^^5V  ^""'  *~">  ''"40,  1005 
Aleploglu,  Gout  V.  315 

Alexander,  Jurgcnson  v.        J)«0 
Allen,  Kinney  f.  744 

ill       <^**^'9"i«"-  33,  8.-)0 

Allones  v.  Elkan.  334 

Alvord.  Newman  x\  yi   'Jos  7i'() 

American  Cloth  Co.  (Limi- 
ted),  Leather  Cloth  Co 
(Limited)  v.  U\,  1;J3,  l;!;{,  1,-54 
.  _    .         ^  304,  ;5«7,  548 

American  Grocer  Pultlish- 
in,i?  Association  t.  Gro- 
cer Publishing  Co.      4;J7,  907 

A„  r-  ^08,  909 

Ames  J).  King,  ygo 

Amoskcag  Mfg.  Co.  ».  Gar- 

Q  nt'"".      ^  G8,  1021,  1022 

4"84  ODo""""'  ' ''  ^^^''  ^^^'  ^•^^' 
Same  n  Spear,  10    11    .'50   21  n 
238,342,343,  JMMiMHll.?' 

Andrew.  Budoi.,  1007 

Andrews,  Sherwood  v.      97,  i;{7 

'g53 


Apollinaris   Co.    (Limited) 

i\  iNorrisli,  707 

Appel,  Laiaiide  r.  n^g 

Aragon,  Besson-Aragon   :-.   1099 
Argant,  Guorinean  r.  ioj>3 

ArmisteatI,  Blaekwell  r.  ;j90,  4;J4 

Arthur;-.  Arthur,  '^''nift 

Astier /•.  Stubhs.  i^g 

Atkins,  Schweit/er  t.  (jh9 
Aubineau  <•.  Gillemont,        looj) 

Wilco.Y  ('.  iKjo 

Audicy.  Rooiilt  v.  io63 

Avril  A  Perrusson,  ii4,« 

Ayer  ..  Hall,            i,,o,  ,,03,  (HI 

t'.  liushton,  (j75 

B. 

Badger,  Emerson  ?'.  joo 

Badoureau,  Jlartell  r.  n.^i 

iiaiky,  Gardner  v.  yf^g 

Baird,  Colloday  r.      14,  358,  583 
"a.]on,  Compere  r.  1213 

Bakers'    ic    Confectioners' 
lea  Association,  Abbott 

Balmount,  Chretien  r. 
Bank  of  London,  Lawson  r. 


Banks  r.  Gil)son, 
Barbie r  v.  Bowman, 

V.  Simon, 
Bardon  i\  Berlia. 
Bnrdou  v.  Blanchard, 

i".  Lassau.see, 

Pnidhon  ». 

p.  IJou.x, 

'499j 


79 


389 
1005 

823 
<,  798 
1071 
1097 
1175 
1117 
1088 
1159 
1217 


?F?'' 


•COO 


Table  of  Casks. 


I'  if. 


h  '^ 


15,u<lo:i 

r.  Sal)!itou, 

li;59 

IJ.U'U'oiM 

,  Lc'coci  r. 

lUii) 

]:ari)v/. 

UroiKlliurst  V. 

;-ii3 

IJiriK'lt 

i:  Kuhlcr, 

ll.-;,! 

Baiuett 

c.  Lcucliars, 

ISl 

W oiler.  2,r2 

'3,  74,  .-.'J  J 

lU:.'!) 

Banow's  Applicalioi), 

Ta 

/•f. 

«r4. 

!)74, 

io;j8 

7t>(),  (' 


721), 
Bass  V.  DaAvl)cr, 
t'.  Harris, 
Bassctt,  jMcAiidicw  r. 

210, 
Batty  i-.  Hill, 
;^^Bautaiii  r.  Merckliii, 
;  Beard  r.  'riiriicr, 
Bedford,  Bury  v. 


V  -i 


Hall  r.    !.•),  l(i,  <)1,  12; 

;}(».■),  407,  751,  7!);!,  ;!»4 

r.  Kiiight,  084,  82.*),  <J21 

Basch,  Kinney  v.       ao,  204,  *J1Q 

74.-),  10:J7 
221,  ;}70 

ii;yr 

«:{,  i)4 

70d,  700 

1010 

;}72,  oOo,  ittia 

128,  12?>,  i:]0 

705 

Beeton,  Bradbury  v.        102,  005 

J)0(> 
Bell  r.  I.ocke.  894,  85)5,  890 

Belleeouit  v.  Lancelot,         1100 
,Ben  r.  Larband,  1072 

Beiibow,  Edmonds  v.  800 

"Bennett,  Hudson  v.  219 

.  Ben  -  Sadoun    v.     Ncssim- 

Dahan.  1105 

Bentall,  Itansom  v.  510 

Beruer,  Samuel  v.  12^ 

Beriiu,  Abadle  i\  1144 

Bardon  i\  1175 

Bernard,  Uumas  v.  1054 

iMin.  Pub.  V.  1004 

Bernlieim,  liian  r.  1071 

Bertliaud,  Laneelol  v.  1101 

Bert  he,  (^arnier  r.  1219rt 

Bertin  v.  Taeonct,  1140 

Bietry  v.  Marcel,  1084 

Bil!iii,!.cs,  Marsh  r.  88,  2^9 

Blnin'^er  r.  Wattles,  052 

Binnlnij:,  l)av  r.  {J25 

Birtich'e,  Rover?-.  1058 

Bisson-Aragon  c.  Aragon,    1099 

Bi/et,  Levy  c.  1145 

BlackwellV.  Armistcad,         *]90 

4:J4,  50;],  850 

V.  CrabI),  ;{74 

V.  Wright,        ;>5,  oJ»7 

^98,  ;i99,  4811.  728 

Blaise  r.  Pitet,  1100 


Blanchard,  Bardou  r. 

r.  Hill, 
Bloc  r.  niii!;s-\Vils, 
liiolicld  ,'.  Payne, 
Biocnur.  Bloi^s  r. 


B! 


/'.  Bloomer, 


iin 

410 
10  i  9 

2:!5.  912 
54i,  ,s24 
54,>,  824 


Boardman  /'.  Meriden  Bri- 
tannia Co.,       20,  49 J, 741,  753 
Bodevin,  Gourbeyre  c.  1104 

BoiUey  /•.  Joilivet  1077 

Bolles,  Fenn  i:  785,  780 

Bolton,  Kinahan  v.    02,  287,  ;;05 
400,  5iy,  514 
Singleton  /\  040 

Bouth  r.  Jarrett.  105 

Bostv.ick,  Lockwood  r.   140,  142 

o  1 8,  i>  ( 9 

Bouchet,  Mauprive/.  iJ.  1128 

Boulau,  Faivre  v.  1187 

Bouman,  Barbier  r.  1071 

Bournhonet  r.  Tisseron,         1152 

Bowman  v.  Flovd,  791,  792 

Buyer  ;•.  Boyer.'  1149,  1202,  120;J 

V.  Gelin,  L215 

f.  Lemit,  1200 

V.  Massieu,  1150 

Bojington,    Tucker    Mfg. 

Oo.  i\  4lj0,  7o4,  i;i5,  972 

Bradbury  v.  Beeton,        102,  905 

!)0(i 

V.  Dickens,  788 

Bradley  v.  ^Norton,  1^5,  400,  707 

708 
Braham  v.  Bustard,  280,  a02,  ;J0;{ 

y04,  OSO 
Brain,  Purser  v.  4i;> 

Bricard  v.  Teissier,  1077 

Briet,  Biche  r.  1008 

Brion,  Howe  Machine  Co. 

t\ 
Broadhurst  t).  Barlow, 
Brook  i\  Evans, 
Brooklyn  White  Lead  Co. 


1209 

yiH 

808 


V.  jMasury, 
Brouse  v.  Cressent, 
Brossier,  David  v. 
Brossoni,  Lelarge  v. 
Brown,  Collins  Co.  v, 

c.  Mercer, 
Browne  v.  Freenuui, 
Brunton,  Colleen  /•. 


!i57,  582 
1172,  1110 
1110 
lOi'ti 
115 
497 
44,  Y',  1 
8.9,  114 
JOl,  :;-ll,  449 
Same  r.  Same,  417,  "iS:! 

Bry:in.  Curtis  i\  21,  98,  290.  494 

55y,  504 


Table  of  Casks. 


HI  r. 


1117 

^10 

10  i!) 


2:r>,  'J  12 

54.!.  S24 

r.4.J,  (H-J4 

•iden  Bri- 

0,  4'.).],  741,  i:h\ 

yic  f.  1104 

107? 

78"),  7^0 

t'.    (1-3,  :;2,S7,  ;;(ir) 

4Gl>,  olo,  514 

1 V.  U40 

105 

ood  F.  140, 143 

vczw.  11 --28 

1187 

•  T.  1071 

■<scron,         lir)3 

\,  7!)1,  7i)3 

114!),  1303,  130;} 

1315 

1300 

1150 

ker    Mfg. 

,0,  704,  io"),  973 

Ion,        103,  m)5 

S)0(] 

kens,  788 

n,  105,  400,  707 

7(i8 

rd,  28G,  303,  ;iO;{ 

aC4,  08(5 

4iy 

icr,  1077 

1008 

xchine  Co. 

arlow, 

i  Lead  Co. 
;{57 


1305) 

318 
808 


1173,  lliO 

1110 

10;() 

ll.l 

4117 

44,  ^71 

S.  0,  1 14 

301,  :,41,  44it 

417.  '.83 

21,  !)8.  3!)0,  4il4 

5u3,  504 


nit, 

V. 
fC  V. 

L'o.  c. 

lltlll, 
11  I'. 


liudoit.  AimIit  r. 

UllisSO!,,    .Mcilicl'   l^. 
Iiur!,a'S.S  ,-.    H;|t('Iv, 

^•.  Hills,' 
Biirko  r.  Ciissi!) 


10;i7 

1171 

UK! 

01)- !,  !)4I 

3!4 

315 

;}3,  303.  :;!)  1 


4!)5,  4!);;,  O'tl,  003,  (i(!3 

WoliV  i\  ;;4,  1S3,  3!>;i.  .■,07 
.„  010,  004,  0  ;5 

Burnett  i\  Plialon,  340.  341    34> 
087,  843,  843,  844,'  845 
Bnnows  r.  Fosier,  S70 

Bury  r.  Bedt'ord,      138,  130.  130 

705 
Bustard,  Brahain  /•.  380.  303 
„  •  303,  304,  Osd 

Byass  i\  Sullivan,  ^'st 

Byron,  Lord  i\  Julin.ston,       878 


C. 


Cabrideus,  Prot  v.  1301 

Calnicl,  Loroy  i\  ]1>h) 

Cimiu.s,  Farina  v.  i(),st> 

Canal  Co.  r.  Clark,      20.  70.  (J()0 

711,  713,  713,  758,  750,  1037 

1038 

Candco  r.  Deere,  31.  35  104  ''<»;', 

3S3.  384,501,  650,  708',  700!  710 

Canliani  r.  .lone.s,  041,  043 

Charlton  Metallie  Paint  Co.,  ' 

Prinee  Metallic  Paint  Co.  r.  033 
Cardin,  Lister  v.  1004 

Carlan,  Stone  v.  ,s7 

earlier,  Billet  v.  3Ifl,  ;n7 

Carlile,  Cartier  i\     401,  403,  033 
Carmioliael  i\  Latitner,  154,'  817 

818 

Carnidade  r.  Carnidade.        1118 

Carpenter,  Tavlor  v.     4,  5,  0  H(! 

113,  413,  448,  014.  1001 

Taylor?'.  50.  110, 

354,  358,  3M3 

Same,  Same  r.     57,  58,  113,  33(!, 

Cartier  r.  Carlile,     401,  4t)3,  033 
i\  May,  101,  103,  103 

Carver  r.  Pinto  Leite,     373,  3?;} 
Case,  ^Morrison  v.  {\\)\ 

Cassin,  Burke  i\         33,  303,  304 
405,  49G,  001,  003,  0(i3 
Caswell  i\  Davis,       7(;,  0(i7,  ()08 
^„     ,  CG9,  070,  073 

Celard,  Claye  v.  1113 


Cliad-cy,  Genin  r. 
Ciiandicr,  Cocks  r. 
CI;a!)ot(4  r.  Fcron, 
C;ia;ij)ell  /•.  Davidron, 


501 


015 
It '31,  1035 


■  >■). 

80. 


'••  Shcard, 
CIiavpcMlicr,  ClcrlMii  v. 

<H"radeau     d( 
S;i Vrt  (;er\.iis  r. 
Clieavin  r.  Walker, 
ClK'deville,  tJrczicr  r. 
Clieveneineiit  /■.  Forest, 
Clionct  /•.  Pierre  I'rou.x, 
Clioyiiski  r.  Colieii, 
Clirciieii  /-.  Baliiiount, 
Clirisiic  /-.  Christie, 
Christy  /■.  Djuidc, 

I'.  .Murphv, 
Chuhh  /•.  Ciilliihs, 
Churlon  r.  Donulas, 
Clark  r.  Clark,   13,  ;i55,  350 
J)ciau';ire  A:  Hudson 
Cnii;il  Co.  v.       30,  70,  (idO 
713,  713,  758,  750.  lO'JT, 
'••  Freeman, 
Keri'  r. 

Spottiswoode   '. 
Clayc  r.  ('('lard, 
Clemens  r.  Such, 
Clement  /■.  .Ma(idi(;k,       457, 
Clements,  Shii)\vri'jht  ;•. 
Cleiian  r.  Charpeiilier, 
ViHi'r  Clicijuot,  Weilc  r. 
Closs,   He;;-,   r. 

Clyde, ANinsor  /•.  3(»,  151,  531, 
Coatis  '■.  (ioddard, 

r.  llolbrook,     3,  111. 


350 

8.S1 

1130 


nos 

570 

1310»/ 

1133 

1174 

103;} 

I0(i5 

s;!i 

115,s 

5s  1 

3:8 

^87 

1,  004 


Cocks 


Piatt, 
Chandler. 


oi; 


1034. 
Colleen  r.  Brunloii.         8,  0 
301,  341 


II 
1038 

80  ;• 

1154 

807 
1113 

sso 

,  NO.S 

140 
1130 
1148 

331 
.  504 

333 
,  354 
1000 

005 
1035 


Same  i:  Same, 
Cohen,  Choynski  v. 
'■'•'  Collins  Co. 
Cohen  /•.  Maris, 
Coleman,  Licbiir  r. 
Colladay  r.  Baiid, 
Collender.  JMielan  t 
Collins  Co.  r.  liiown, 
r.  Cohen,* 
(".  Beeves, 
r.  Walker, 

*  or  Cowen. 


114 

140 

417,  ;s:! 

1033 

115 

1137 

lisl 

14,  358,  583 

810 


11" 


115 
115 

i;r 

458 


n 

i 

■4 

; 

1 

;■; 

!.; 

i 

i' 

i 

1.,    ('■ 

•1: 

I 

:* 


;;! 


II    '■: 


502 


Tahlk  of  Cases. 


Colo-.'.iiil  Lifo  Assuranro 
Co.  v.  Home  «fc  Colonial 
Lil'ij  A-isiiranct'  Co.,  lOl'J 

Colloii  V.  Tlioinas,  !)44 

Combior  -  Dcstre,     Haspall 

t.  1  r.'j 

V.  AlalltT- 
La-ulas,  101)7 

IIo\V(!       V. 


C  o  m  ji  a  g  11  i  c 

Oulray, 
Compt-rt'  r.  Bajoii, 
Comstock  V.  While, 


V2U 
VllH 
178,  541$ 
790 
Con;.fre.ss  &  Kmpire  Spriiif? 
Co.  T.    lli;;!i   Rock  Con- 
gress Sprinic  Co.,  147, 
14!).  (».»!),  82!),  J)81, 
Con.'foli(la1<'(l  Fruit  Jar 

V.  i)t)rllinii,er. 
Cook  r.  Starkweather, 


148 
\iS'i,  WM 
■Co. 

29(),  inn 

985 

297,  am 

098 
90,  13G,  283 

<i49 
Cotton  r.  Gillanl, 
Coudray  v.  MonjM'las, 
Courtois  (;.  ilolzmunn, 
Couston,  Moet  r.  217 


Cope  r.  Evan.s, 
Cornwell,  Morse  v. 
Corwin  r.  Daly, 


Crahlt,  Blacicwell  i'. 
Crawshay  v.  Thompson, 


mi 

1178 
1208 
1003 
1004 
374 
281 


Crelte  v.  Rommetin, 
Crcssent,  Brou.sse  v. 
Croll  r.  Day, 


;}27,  440,  920 


11 


i,i. 


1123 
1196 


2,  300,  001 


Crowley,  Walton  v.   122,  302,  303 
3,'J3,  419,  420 
Cuillieron-Policard  v.  Gad- 

obert,  1194 

Cumston,  Ilallett  v.  013 

Cunie,  Wothernpoon  *.    20,  391 

477,  479,  480,  714,  715,  710 

Curtis  V.  Bryan,  31,  98,  290,  494 

553,  5()4 


D. 


Dale  V.  Smithson,  400,  545 

Daly,  Corwin  v.  90,  120,  283,  019 
Isaacs  r.         883,  884,  1032 
Daude,  Christy  o.  1158 

David  t).  Bro.ssier,  1110 

Davidson,  Chappell  v.     211,  256 

455,  881 


D  ivies,  Dawps  v. 
D.nis,  CJaswell  «. 


743 

70,  007,  o;i8 

O'JO,  070,  o;3 

V.  K(!ndall,     34(5.  45:2,  031 

V.  KcMtiedv,  (i'H'< 

Davol  Mill*.  Ferguson  v.    22,  23 

754,  755,  750,  757 

Dawbe:-,  Bass  v.       220,  221,  37(i 

Diwes  V.  Davies,  743 

Day  r.  Binning,  325 

Crolt  V.    '  2,  300,  OJl 

V.  Day,  411 

Dayto!!  V.  Wilkes,  789 

Deehaille,  Lawson  ?'.    1170,  ll!'(i 

Deck((r  v.  Docker,    438,  022,  9^)7 

De  (Joiito,  Stephens  v.       9i),  !);)2 

903.  904 


Deere,  Candee  r. 


24,  25,  101, 


293,  383,  384,  591.  050,  708,  709 

710 
Dciz  i\  Lamb,  l(i4 

Dc  Lalen  v.  <jri,<!;non,  1057 

Diilaware  &  Ihuison  C^annl 
Co.  V.  Clark,     2(i,  70,  0(iO,  711 
712,  713,  758,  759,  1027,  1028 
Deloiidre  v.  Shaw,  820 

De  Milly  ».  Jaussen,  1170 

Demoiselles  Louise  &  Lu- 
cille, Dubois  ?).  1125 
Demot  V.  Sociele  des  huri- 

tiers  Liebitf, 
Denham,  Hirst  ?;. 
Denicke,  Reeves  v. 


1192 
095.  ()90 
32,  803,  804 
805,  800 
1130 
705 
1188 


Denis  v.  Vij^nier, 

Dent  V.  Turjiin, 

Deross}',  Gull  Ion  v. 

Doriiii-er  r.  Plate,  18, 95,  90,  959 

Desire  Michel  v.  Achard,      1123 

Durn  1).  Fi!iel.  1100 

Devlin  v.  Devlin,  949 

Dey,  Swift  v.  195,  308 

Diaper,  Orr  v  274 

Dickens,  Bradbury  v.  7^t' 

Dickson  v.  M'Masler,  799 

Dinsilly  ?).  Dioux,  1002 

D'inviile  t\  Vci{,miolles,        1087 

Dior,  Law  son  v.  1182 

Dixon  V.  Fawcus,  459,  826 

V.  Holden,  800 

V.  Jackson,  428 

(-ruciblc  Co.  v.  Gug- 

geiiheim,       143,  380,  473,  558 

Dobot-Descoutures,  Dugue 

V.  110'5 


m 


Table  of  Cases. 


fiOJ? 


748 

70,  007.  o:iH 
i'J!»,  (J70.  (i;a 

oil  V.    22.  3:5 

■5.-),  7."'.(»,  7.") 7 

521),  221.  :57(J 

74:5 

3.  aoo,  0.)1 

411 

7.S!» 

.    117(i.  lll« 

4SB,  033,  !)'!? 

V.      J)i),  !);t3 

()();],  i)04 

34,  3.*).  101. 

050.  703,  70!) 
710 
104 

n,  l()r)7 

11  Oannl 

,  7t),  000 

iS),  1037, 


I, 
&  Lii- 

o-s  hCri- 


711 
1038 

830 
1170 


1135 


1103 
005.  (iOO 
4^3,  80;{.  804 
805,  800 
lliiO 
7(i5 
1188 
|18, 05,  S)0, 950 
;bui(l,      1133 
1100 
049 
195,  ;508 
374 
78c' 
709 
1003 
1087 
1183 
459,  830 
800 
438 
V.  Gug- 
!J80,  47a,  558 
Dugue 

11C5 


V. 
IT, 

illcs. 


Dollfus  r.  Lallpmand,  li;J4 

Dorllinjjer,      Consolidated 

Fruit  Jar  Co.  r.  509 

Dorvaidt  v.  Iliircaux,  1093 

r.  Teissier,  10i)0 

Douglass,  Cliurtoii  r.  787 

Dowiiman,  Motley  «).        .55,  511 
Droux,  Diiisilly  v.  1003 

Dubois/'.  Demoiselles 

Louise  &  Lucille  1125 

Dugue    V.    Dobot-Descou- 

tures,  1105 

Dumas  v.  Bernard  and  Du- 
mas, 1054 
Dundas,  Reg.  v.  230 
Dupoiit,  Tliibierge  V.  1098 
Duquuirc,  Faivre  v.  1115 
Durand,  Fay  v.  1199 
Duriot,  Robineau  v.  1080 
D'Utassy,  Faber  v.  830 
Duval,  Fiolet  v.                     1003 


E. 


Eastcourt  v.  Estcourt  Hop 

Essence  Co.  (Limited)         225 

Edelsten  v.  Edelslen,      243,  285 

359,  HCO,  404,  405 

V.  Vick,    121,  453,  537 

731 

Edginton  v.  Edginton,  288 

Edmonds  v.  Benbow,  890 

Eicbele,  Peltz  ».  350 

Elkan,  Alloncs  v.  234 

Upmann  v.  234 

Ellis  V.  Zeilen,  387,  430,  560,  838 

Emerson  v.  Badger,  100 

Erard,  veuve  v.  Erard,  1313 

Estcourt  Hop  Essence  Co. 

(Limited),  Eastcourt  v.        235 

500 

Esterbrook,  Gillott  v.    04,  05,  73 

150,  371,  437,  743,  980 

Evans,  Brook  v.  808 

Cope  V.  297,  395 


F. 


Faber  v.  D'Utassy, 

V.  Faber, 

V.  Hovey, 
Faivre  v.  Boulau, 

V.  Duquaire, 

Falkinburgh  v.  Lucy,     159,  493 

753,  848,  960,  1017 


830 

19,  491,  607 

249,  697 

1187 

1115 


Furina  v.  Camus,  10S2 

V.  Silverlock,        173,  173 

313,  433 

Farnchon,  Longuety  v.         1310 

Fassett,  Filley  v.        07,  101,  377 

471,  090,  9(tl 

Fawcus,  Dixon  v.  459,  836 

Fay  n  Durand,  1199 

Feim  V.  Bolles,  785,  780 

Ferguson  v.  Davol  Mills,    23,  23 

754,  755,  756.  757 

Feron,  Chapotel  r.  1173 

Fetridge*.  Merchant,     431.  540 

083.  841 

213,  354,  541 

046,  047 

07.  101.  377 

471,  090,  901 

(»(i6 

1003 

769,  900 

901 

61,  .530 

791.  793 

347  416 

307,  .501,  .563 

091,  693,  093 

Forest,  Chevenement  v.        1133 

Gurrin  v.  1050 

Forges,  Hicque  y.  1113 

Foster,  Burrows  v.  870 

Ford'w.  307,  .501,. 563,  691 


V.  Wells, 
Filley  v.  Fassett, 


Findlatcr,  Raggett  v. 
Fiolet  v.  Duval, 
Flanagan,  Matsell  v. 


Flavell  V.  Harrison, 
Floyd,  Bowman  v. 
Foot  V.  Lea, 
Ford  V.  Foster, 


693,  693 
1131 

1190,  1195 

208,  445 

544 

209 

338 

1307 

44,  871 

867 


Fould  r.  Honegger, 
Fowlc  V.  Spear, 
Fox  1).  Meurgey, 

Millington  v. 
Francais,  Ilobbs  v. 
Franks,  Pierce  v. 

V.  Weaver, 
Frappier,  Rogier  v. 
Freeman,  Browne  v 
Clarke  v. 
FrereetValletB.  Mauchien,  1109 
Frion,  Wickers  v.  1157 

Fulton  v.  Sellers.  138.  588 

FuUwood  V.  Fulwood.  617 

G. 

Gadobcrt.    Cuillicron-Poli- 

cardp.  1194 

Gallet-Lefcbvre  v.  Goubcau,  1191 
Gamui ».  Rivorri,  1065 

Gardner  V.  Bailey,  388 


W: 


M 


no4 


Table  of  Cases. 


Bi)  ■ ;; 


I 


I* 

I'      V.  T 

I!  tl 

"t 


J-1      :*v; 


Garner,    Aiuoskcag    Mfg. 

Co.  r.  m,  1020,  1022 

Garner,    Amoskeag    iMfg. 

Co.  V.  77.  22(5,  251, 401 ,484,  fi:U5 

Merrimack     Mfg. 

Co.?'.       ^52,  418,  84f) 

Garnhart,  Mc(;artncy«.  a81,:J82 


Garn^cr  v.  Ikrthe, 
V.  Garnier, 
V.  Ludiere, 
V.  Slaitre, 
V.  Martin, 
V.  Hi  voire, 

Gauton,  Lemoine  v. 

Geiseudorf,  Sohl  v. 


121!)a 

1219(«,  e 

1319& 

1219c 

1219/ 

1219 

13,  525 

45,  145,  ;}85 

657 

1315 

945 

1074 

11G3 

1051 

1180 


ii 


Gelin,  Boyer  v. 
Genin  v.  Cliadsey, 
Gerard,  Ruffy  v. 
Gerbean,  llerold  v. 
Germain  r.  Sevcne, 
Gerstle,  Jlichel  v. 
Gibbs,  State  of  Missouri  v. 
G/l)son,  Banks  v.  797,  798 

Gillard,  Cotton  v.  153 

Giliomont,  Aiibineau  v.        10(19 
Gillies,  Tavlor  v.  (u'A 

GHlis  i\  Hall,    144,  150,  592,  (511 
Gillott  V.  iistorbrook.    G4,  (55,  7^ 
159,  371,  427,  743,  980 
V.  Kettle,  171 

Giradeau  de  Saint  Gervais 

V.  Charpentier,  1108 

Glen  &  Hall  Mfg.  Co.  v. 

Hall,  833,  947,  948 

Glcndon  Iron  Co.  v.  Uhler,     734 

735,  730 
Gleuny  r.  Smith,        17,  289,  409 

943  943 

Goddard,  Coates  v.  '  333 

Godillott  V.  Hazard,      498,  1033 

1034,  1035,  103G 

Goubean,    Gallet-Lefebvre 

?'.  1191 

Goulard,  Wolfe  ®.  434,  (548 

Gourard  r.  Trust,  (521 

Gourbeyro  v.  Bodevin,         1104 
Gout  V.  Alploglu,  315 

Graham  r.  Plate,  24(5 

Gray  v.  Koch,  C58,  946 

Wotherspoon  v.  1011 

Green  v.  Rooke,  433,  1030 

V.  Shepherd,  42G 

Grezier  v.  Chedeville,  1219 

Griffith,  Chubb  v.  218 


Grignon,  Dp  Lalcn  v. 

(iroccr     Publishing      ('o., 
American    Grocer    Pub- 
lishing    Association     r. 
!)()7,  90S 

(^.rosvcnor,  Seabury  '"• 

Guerincau  r.  Argaiit, 
r.  Mignon, 

(Juggonhcim,  Di.von    Cru- 
cible   Co.    V.      143,  380, 


11)57 


4:!7. 

,  909 

572 

1  ()'.»;] 

1094 


473, 

558 
Guilhon  v.  Liudo,  403,  827,  84(5, 

847 
1188 
10h5 
il21 
1050 


V.  Derossy, 
Guillot  !\  Richard, 
(juislan  c  Labrugnere, 
Gurrin  v.  Forrest, 


H. 

Haley,  Lee  v.  '^9,  557, 

Hall,  Ayer  v.  150,  592, 

V.  Barrows,    15.  10,  91, 

305,  407,  751 ,  793, 


Gillis  V.     144,  150.  5!l2, 
Glen    &    Hall     Mt>. 

Co.  V.  832,  {i47, 

Low  V. 
IVlorse  V. 
Ilallett  V.  Cumston, 
Halphen,  IMontagnac  v. 
Hanbury,  Liebig's  Extract 
of  Meat  Co.  (Limited)  v. 
Harper  v.  Pearson, 
Harris,  Bass  v. 

Palmer  v. 
Harrison,  Flavell  v.  01 

V.  Taylor,    00,  245 

Hately,  Burgess  v. 
Hazard,  Godillott  r.      498, 
1034,  1035, 
Heath  v.  Wright, 
Hcidsieck  v.  Souris, 
Helleley,  Johnson  v. 
Henderson  r.  Jorp, 
Henne,  Pinaud  r. 
Hcnnessyv.  Wheeler, 
Henriques,  Howard  v. 
llcrlich,  Mayer  v. 
Herold  r.  Gerl)ean, 
Herve,  Prot  r. 
Hcuze,  Min.  Public  r. 
High       Rock       Congress 
Spring  Co.,  Congress  & 


590 
Oil 

127 
794 
Oil 

948 
9(52 
809 
013 
1197 

G54 

809 

1187 

555 

,  53(5 

,  300 

408 

214 

1033 

1030 

538 

1140 

790 

200 

1150 

571 

100 

1080 

1102 

1198 

1107 


Table  of  Casea. 


o()5 


Empire    Spring    Co.    v. 
Itr,   118,    14!>,   (551),  8-3!),  Osi. 

IIill,  n-AWyr.  1010 

liliiiicliiinl  /'.  .jio 

Hills,  IJiirgoss  i'.  ^>i,-) 

lline  r.  l^u',  85,  ()Sl),  7S-.' 

1  links- Wils,  Bloc  v.  io;<j 

Ilirscli  )'.  Jonas,  ^si 

Ilirschfi'ld,  Louther  Cloih 
Co.  (LiniitcHlj  v.     244,  '271,  r,Ali 


U'J.j,  <!!)(! 

o44 

20.J,  D.'-j;] 

877 

8S-3 

l()!).l 

3,  111,  2.11 


Hirst  i\  Dcnliiun, 
Jlohljs  (".  Frunciiis, 
lloge,  ^loorniiui  v. 
Hogg  (1.  Kirl)y, 
r.  .Miixwc'il, 
Soliortliose  v. 
Hollirooii,  Coats  v. 

25.J,  447,  yi;j,  loot) 
Jloldcn,  Dixon  r.  y(i(j 

Holloway  c.  Iloiioway,  n;),"),  (JO-3 
Holmes  V    Holmes,   IJootii 

it  Atwood  Ml'g.  Co.     2',fi,  47,") 

^^  ,  4''«,  ;■).■)!),  (i;J4,'  (i:!.') 

Holzmann,  Coiirtois  v).  12U8 

HomevS;  Colonial  Life  As- 

.siirance      Co.,    Colonial 

Life  Assurance  Co.  v.        H)12 


Honegger,  Fould  v. 
llookham  r.  Pottage, 

Hostetter  v.  Vowinkle. 


483, 
247, 


IKil 

,  810 
811 
2!)4 
;{8() 
08!) 
lO:) 
«!)7 
KiO 


Houghton,   Rowley  v.  07."), 
Hovenden  i\  Llovd.  71 

Hovey,  Fabcr  y. "  24!), 

Howard  v.  llenriques, 
Howe    V.    Howe   JMaehine 

Co.,  4.2'J,  520,  COS 
I'.  ^FcKernan,  270 

Pidtling  i\  ry.U) 

V.  Searing,  124,  12.") 

Southerne  v.  170 

Machine      Co.      v. 
Brion,  1200 

Machine    Co.    i\ra- 
qiiain,  1200 

Sewing       ^lachine 
Co.  V.  Onfray,        1214 
Hudson  V.  Bennett,  219 

V.  Osborne,  142 

Huguin  V.  liicher,  v.  1081 

Humphrey,  Peterson  v.  450,  784 

940 
Hunt  V.  Maniers,  ISO 


llurcaux,  Dorvault  ;•.  1093 

Huntington,   liudderow  r. 

451,  1)57,  1003 
Ilutlon,  Kelly  i'.  i;j<) 


I. 


Inuram  r.  Stiir, 
Is.iacs  r.  Daiv, 


•  899 
SS:5,  881,  1():!3 


Isaacson  v.  Tliompson, 
J. 

Jackson,  Dixon  r. 

Jalnzot  r.  Taconnet, 

James  /-.  James, 

Ja(jucs,  Joliic  /'. 

Jarrett,  Boolli  r. 

Jauseen.  Dc  .Milly  v. 

JoI)it,  .Mounier  r. 

Johnson  r.  Helleley, 
Sohier  v. 
Williams  /-.   422,  (»8;{ 

Johnston,  Lord  Byron  i\        878 

J(illie  r.  Jaipics, 
Joilivct,  Boilley  v. 
Joly,  ,Masv(./  (;■' 
Jonas,  llirsch  r. 
Jones,  Caidiamw. 
Oldiiam  V. 
Jorp,  Henderson  r, 
Jouvin,  ro/ir  r.  Jouvin, 
Jo/eau,  Burdel  v. 
Jurgenson  c.  Alexander, 


428 

1155 

(il2 

201 

105 

11 70 

1000 

790 

813 


201 

1077 

1124 

184 

041,  042 

179 

200 

li!);j 

1110 
9J0 


Kelly  r.  Hutton,  toi) 

Kendall,  DavLs  i\     340,  452,  Os'l 
Kennedy,  D.ivis  v.  (jys 

Kerr  i\  ('la,k,  11,54 

Ketcham,  Weston  v.  813,  8H  '"^I'Ti 
Kettle,  (iillott  ^'.  171 

Kimball,  Singer  ]\rfg.  Co,  v. 
,..     ,  '         4!]5,  7;};} 

Kinahan  v.   Bolton,  02,  287,  ;J05 
400,  5l;j,  514 
King,  Ames  v.  9,-,;^ 

Kinney  v.  Allen,  744 

l:    Basch,    30,    204,    310 
73!),  730,  745,  10;{7 
Kirby,  Hogg  v.  H77 

Knight,    Barrows  v.      084,    825 

921 
Knott  I'.  Morgan  'A9n 


WW 


506 


Table  of  Cases. 


I  l!| 


Knott,  Wi'lch  i\      m, 

17.' 

".,  irii 

Kdcli,  CJniv  V. 

OoH,  )»4(l 

Kublur,  Banielt  v. 

L. 
Luislit.  Slirimpton  v. 

11^8 

HAS,  :{49 

Liiinl  T.  Wilder, 

u((4 

Luinl).  Dei/  v. 

104 

Iiiiii(l,!,'rair,  Stokes  v. 

im 

liitn^rilon,  iiCwKs  v. 

781 

liiirbjiiul,  Ik'ii  »'. 

1073 

Liil)ni,i,'i»ore  v.  Guislan, 

1131 

LiKiroix  r.  Ahudie, 

1147 

Liiliindo  r.  Appel, 

1103 

Lullenmiid,  Dollfiis  v. 

llil4 

Ltincclot,  JJollcTourt  c. 

1100 

r.  HiTtlmnd, 

1101 

Liindon  r.  licroux, 

1183 

Lureimudierc     v.     Per 

ne- 

Giiyot, 

1055 

Larned,  Lowell  Mfg.    Co. 

V.  080 

Lart,  lliiie  v.  85,  680,  783 

Jja  Hue  ^\  Massia.s,  1184 

Lassaiisoe,  IJardon  v.  1088 

Latimer,  ('arniichael  v.  154,  817 

818 

Laurenv'on,  Poupicr  v.  1083 

Laurens  v.  Laurens,  1111 

Lawsou  r.  Rank  of  London,    833 

V.  Dechaille,  1170 

V.  Dechaille,  1186 

■V.  Dior,  1183 

v.  Wei,  1170 

Lazar,  Woodward  v.       101,  103 

Lazenby  v.  Wliite,  530,  610,  849 

Lea,  Foot  v.  347,  410 

v.    Wolf,  309,  393,  733,  733 

1031 
Leather  Cloth  Co.   (Lim- 
ited) V.  American  Cloth 
Co.    (Limited),   131,    133,    133 
134,  304,  307,  548 
Leather  Cloth    Co.    (Lim- 
ited) V.    llirsehfeld,   344,  371 

540 
Lecampion,  Tl.'<sicr  1078 

Lccomte,  Ivcvigourcux^  v.      1100 
Lecoq  v.  Bargoin,  1000 

Lee  V.  Haley,  09,  557,  590 

Lelarge  v.  IJrossom,  1050 

Lemercior  v.  Millin,  1103 

Lemit,  Boyer  r.  1300 

Lemoine  v.  Ganton,  13,  535 


Lcpcrflie '/•.  Rifiiumont,  1179 
li.'.'oiix,  Laiidon  v.  1183 

liiroy  *•.  Calmel,  1139 

Leufli!if><.  Bariicft  r.  181 

Levigouicii.x  /'.  Leconite,  1100 
I.,('vy  r.  Bizet,  1145 

Lewis  r.  liangdon,  781 

liiebig  r.  Coleman,  1181 

Liebig's  Kxlraet  of  Meat 
Co.  (Limited)  v.  llan- 
burv,  054 

Lindo,  Guilhon  v.  403,  837,  840 

847 
Lister  'c.  Cardin,  1304 

Lloyd,  Henderson  t.         71,  103 
Central,  Lloyd  Fran- 

(;ais  ?'.  1119 

FraiK;aiH    v.    Lloyd 

Central,  1119 

Locke,  Bell  v.  804,  895,  890 

Lockwoodi>.  Bostwick,  140,  141 

378,  379 
London  and  Provincial  As- 
surance Soc.  V.  London 
and      Provincial     .Joint 
Stock  Life  Ins.  Co.  630 

Longuetj' ('.  Farnehon,  1310 
Lord  Byron  v.  .Johnston,  878 
Louit,  JVIenier  v.  1109 

Lovie,  Thomas  v.  1076 

Low  T.  Hall,  903 

Lowell  Mfg.  Co.  V.  Larned,    980 
Lucy,  Falkinburgh  v.      1.59,  493 
7.53,  848,  900,  1017 
Ludiere,  Garnicr  v.  13196 

M. 

McAdam,  Morgan  v.  549,  550 
McAndrcw  t:  Bassett.  93,  94 
310,  705,  700 
McC^ardel  v.  Peck,  03, 93, 103, 194 
McCartney  ».  Garnhart.  381,383 
McGowan  Bros.  Pump  Ma- 
chine Co.  D.  McGowan,  014 
McKernan,  Howe  v.  370 

M'Master,  Dickson  v.  799 

]SIacrae,  Young  v.  650 

Maddick,  Clement  v.  457,  898 
Maitrc,  Gamier  v.  1819c 

Mailer -Landas,    Combier- 

Destre  v.  1097 

Manierc,  Hunt  v.  180 

Maquain,  Howe  Machine 
Co.  V.  1200 


Taulk  of  Casks. 


n07 


Murrol,  Bictry  r. 

iMiiiilmnd,  W'icktTs  r 

^>Iaris,  Colicii  <•. 

Alursli  /'.  IJilliiins. 
>:  W'iincii, 

Alursliull  r.  Hosh, 

Martfll  r.  IJuddurcau 

.     '••  Marld. 
Miirlin,  (Jam KM-  V. 
Masse'/,  r.  ,J()lv, 
Alassias,  I.a  Unv  i\ 
Mussit'ii,  IJdvcr  V. 
Alasmy,    lirljoklyii 

Lead  Co.  r. 
Matsell  r.  Flaiiaj,Mii, 


1084 

ur,! 


Maucliion,  Frore  et  Vallot 


88.  a;{,) 
iirii 

ll(i4 

laiij/' 

1124 

1184 

1150 

While 

Jir>7,  583 

7«li.  000 

001 


1101) 
1311 

1128 

883 


Mau,!,aT,  Hcrny  v. 

M;mi)rivc'Z  r.  IJonchct, 

Alaxwi'll  r.  llngi:;;, 

May,  C.iilicr  /•.         lO]^  lojj   i,,;{ 

Ala^ycr  r.  llc'rli(-]j,  io8G 

Meikle's  Tradeinaik,  lu  re,    HT.i 

Aleiick,  Partiidgf  c.    7,  ;]3»,  ;i40 

Alencc'ley  v.  Aleiiecle}-,    018,  01!) 

Menicr  v.  Bius.soii,  1171 

V.  Loiiit,  iKij, 

r.  Aler^rot  &  Kosslcr,  1 1«7 


«.  Alt'unicr. 

Spoiicor  V. 
Alenser,  Soniborn  v. 
Alcrecr,  Brown  i>. 
Alerchaiit,  Fetridge  v. 


1100 

ii;i3 

1114 

497 

421,  540 

Alcridcn  Bnlania  Co., 
Boaidnian  r.    30,  40JJ,  741,  753 

Men  den  Biitania  Co. 
V.  Parker,      505,  500,  015,  760 

lif      I,.      T.        .  857 

Alercklm,  Bautain  v.  1089 

Merget&KessIer,  Alonieri).   1107 

Alerrimack    Alfg.    Co.     v 

Garner,  ;j.w,  418,  840 

AIe.serole  c.  Tynberg.     3i)l,  1018 


Meunier.  Alenier  v. 
Aleurgoy,  Fox  r. 
Alichel  V.  Gersllu, 

V.  Streniler, 
Mignon,  Guerineau  v. 
Alillin,  Lemereier  v. 
Millington  v.  Fox, 


1019,  1030 
1100 

1190,  1195 
1180 
1135 
1094 
1103 
208,  445 


''■  Negrc 
Moa(,  Morrison  /•. 
Moclcncl,  Niv<l 
.MoC'i 


Mini.sic'ie  I'nl).  r.  Bernard,  1004 
'•■  llfiizc,       IK,,- 

9'.)5.  UU(\ 
''■  II,  ,■ 

'.  Co  1. Ion,  317,  loo;!, 
'•.  Mor.. 
Aloniiicr,  'rrilioniJIel  /•. 
•Moore,  Tidcolt  /•. 
.MoKrnian  r.  JIo<re, 
Monpelas,  Condray  ;•. 
Moniiignac  v.  nali)iien, 
Alorgan,  Knoll  /•, 

'•.  AleAdam. 
Alorrison  r.  Case, 
r.  Moat, 
''.  Salmon, 
Alorsc  1;.  Coniwell, 

r.  Hall, 
Alortinier,  Prowett  v. 
Alolley  V.  Downman, 
Momiier  v.  Jobil, 
Aliirpliy.  Christy  v. 


1001 
IIH> 
1053 

395,  9s;i 

11.8 

1197 

330 

■)49,  550 
0!)4 

»95,  !»9(J 
831 
(IU8 
809 
897 

55,  511 
1000 


N 


^egrc,  Alinistere  Pub.  I313 

Nessim-Dahan,      Ben 

Sadoun  v.  11Q5 

Newby   r.  Oreiron  Central 

it.  U.  Co.  031,  033,  033,  770 
iNewman  v.  Alvord,  31,  308   719 

730,731,731«,  1014,  101.5,  1010 
In  net  d.  Modenel,  1177 

Noah,  (Snowden  v.  891,  893,  893 
Norman,  Baddo  v.  717,'  7iy 

Norrish,    ApoUinaris    Co.  ' 

(Limited)  v.  737 

Norton,  Bradley  v.  135,  400,  707 

Nowiil,  Kodgers  v.  60,  190 

V.  GOlffi,  833,"  939 

O. 

Oldham  v.  Jones,  17!) 

Onlray,  Compagnle  Howe,  1314 
Oregon  Central  J{.  I{.  (.'o. 

Newi)y  V.  631,  033,  633,  770 

374 

143 

584 

33,  850 

908,  969 


Orr  t\  Diaper, 
Osborne,  Ilndson  v. 

Williams  v. 
Osgood  V.  Allen, 

V.  Rockwood, 


r       i 


'    I 
i 


508 


Table  of  Cases. 


p. 

Piiiiio,  iSievciis  r.  873 

Palnior  r.  Harris,  oo.j 

Parker,  .Mcridoii  Hritannia 

Co.  /:.  50.1,  '>m.  air,,  tiu),  8r,7 

Pa^t^id,^a■  i:  Moiick,  7,  o^i).  o4() 

n.)3,  r,;>A 

Poi-k,    .McCardL'l   v.    33,  92,  1«;5 

;J7;] 
ii:i2 


Payne,  IJInfie'.d  i\ 
Pearson,  Harper  v. 


Peel.  S-C'iihcns  v. 
Peigncy,  Spencer  v 
Pel'tz  r.  Eichelc, 
Porinc-Uiiyol, 

tliere  i: 
Porriissoi),  Avril 
PeiTV  /■.  Tnilitt, 


e. 


Petetsou  r. 


Larenau- 

lOo,-) 

lU:i 

1,  .VJl 

lluinphrey,  AM,  TSt 

i)4i) 

Weed    V.    248,    47s, 

807 

lo;.") 

!»:J1 


Poyre  Sons  r.  Roelier, 
P(^to,  Ponsanlin  r. 
Phalon,  Unmet t  r.  240,  241,  242 
Osr,  S42,  8W,  844,  845 


Plielan  r. 


W  light, 
C'nIleiKlcr, 


U7, 


I'idding  r.  Howe, 
Pie  1-.  Poniel, 
Pierce  t\  J'"'ianks, 
Pinaiid  (\  Henne, 
r    l^ineau, 
Pineau,  Pinaud,  v. 
Pinet,  Duru  i\ 
Pinto    Lcite,   Carver,  v. 

I 

Pilot,  Blaise  i\ 
Plate,  (Jraliam  v. 
Derringer 

Piatt,  Coats  V. 
Ponsanlin  i:  Poto, 
Poi'liani  r.  Wilcox, 


051 

81  (t 

5;}o 

11(18 
20!) 

it.K; 

1090 

1000 

1100 

272 

27:J 


Polta: 


llookliara   r 


202, 

482, 


Poniel,  Pie  ;•. 
P(>U|(ier  r.  Lanrcncon, 
Powell,  Sellzer  v. 
Prince  Metallic  Paint  Co. 

r.  Carbon  .Metallic  Paint 

Co. 
Prut  (•.  Cabrideus, 
('.  llerve. 


1100 
2I() 
V.  18,  95,  !)(' 
9o'J 
605 
9;51 

,  970 
810 
811 

IKIH 

10s:j 
4^1 


0215 
1201 
1198 


Proux.  Cliouct  i\  1171 

Pnjve/.ciide,    Seixo   r.   o(i!),    oiJ 
585,  580,  707 


Provost,  Scvin  r. 

Prowctl  ;•.  Mortimer, 

Prndlion,  Abadie  *•. 
i:  Jiardon, 
V.  Villaret, 

Pui'ser  r.  Drain, 

R. 


1059 

897 

1120,1141 

1159 

ii;;5i 

41(J 


Hadde  r.  Xorman,  717,  718 

l{au;'j.e1t  r.  Findlater,  (KiO 

liaii>oni  r.  IJcntall,  510 

Kas|)a!l '■.  Conil)ier-Destre,   1120 

HiV.cliir.  Wooiani  v.  ;;(il 

Hecves,  Collins  Co.  r.      115,  177 

r.  Deiiiclic,  4;J2,  81i:!,  ^04 

805,  HU(i 

T'epublic  of  Peru  c.     50 

Keg.   r.  {'loss,  2:31 

r.  Dundas,  2;J0 

r.  Smilli.  2;32 

licmy  r.  .Mauger,  1211 

]{ei>iiblic  of  I^eni  r.  Kecves,     50 

j{evnal  r.  U'oliT,  1185,  1205 

PieVnolds,  Smith  >\  2;;i,  iX):!,  !i«4 

!i(i5,  i»i;(!,  !)(i7 

Sonlliorn  r.     Otlti,  roo 

Rian  i\  Bernheim,  l(i91 

Jiicauniont,  Leperche  t.        1179 

Bichard,  tJiiillol  r.  1085 

Kichi'.rds  i\  Williamson,  ]8:{ 

Uiche  /•.  Brict, 

Hichcr  r.  lluguin, 

l{ic(iuc  r.  Forces, 

Bil'elt  r.  Cariicr, 

Hivorri,  (iamiu  /'. 

l{i\()irc,  (iarnier  r. 

Bobineaii  r,  Diiiiot, 

Bochcr,  Peyre  Sons  /•. 

Rockwood,  (>.-good  r. 

liodirers  <-.  Nowill, 


1008 
1081 
111!} 

310.  ;ii7 

10li5 
1219 
1080 
1075 

9(i;;,  !«'.9 

190 


(ill. 


r.  Nowill,  0J1",822,  929 


r.  Uodgers, 
j'udercr,  U(ie<lerer  f. 
Bogcr,  Sargent  /'. 
]>iig(  IS  r.  Tainlor, 
liogier  /'.  Frail]  '•-'■'i 
Bomen.  Sargent  i. 
Uomnielin  r.  Crctte, 
J{ookc,  Green  /•. 
Booult  r.  Audicy, 
Boss,  jMarsJiall «. 


I') 
li;i4rf. 
1112 
sol 
1207 
1142 
1122 

4o';],  ui;io 

10(15 
55C 


I    1 


Table  of  Cases. 


500 


T?outh  )\  Webster, 
Roux,  l>;ir(lon  p. 
How  land,  Sfott  ;;. 
Rowley  r.  1  louijjliton, 
Rover  /■.  Jiirtiehe, 


580 

375,  58!) 
1().-),S 


Ruclderuw  i\  Huntington,      451 


Ruffy  r.  Gerard, 
Rushton,  Ajer  v. 

S. 


957, 1002 
1074 
075 


Sabatou,  Bardou  v.  ll;59 

Salignac  r.  Savunier,  107;] 

Salmon,  Morrison  v.  831 

Samuel  r.  IJerger,  V2',i 

Sands,  Woods  c.  15;{ 

Sargent  v.  Roger.  1143 

v.  Romen,  1143 

V.  Willems,  115;j 

Savanicr,  Salignao  v.  UK:] 

Sehortliose  /•.  Hogg,  1()!),"} 

Sehweltzer  /'.  Atkins,  080 

Scott  v.  Rowland,  80S 

r.  Seott,  800 

Scoville  V.  Toland,  400 

Seabury  r.  (irosvenor,  573 

Searing-,  Howe  i\  134,  135 

Sedon  I).  Senate,  I'M 

Seignetto  r.  Seignettc,  105:) 

Seixo  V.  Provenzonde,  ;}(!0,   ;J70 
585,  580,  707 
Sellers,  Fulton  v.  US,  588 

Seltzer  v.  Powell,  4;]1 

Senate,  Sedan  v. 
Seveiie,  (Jermain  v. 
Scvin  i;.  Provost, 
Shakespear,     Wheeler     & 

Wilson  :Mfg.Co.i'.  333,  733,  873 
Shaw,  Delondre  v.  830 

Sheard,  Ohappell  v.  89,880 

Shepherd,  Green  i\  430 

Sherwood  i'.  Andrews,97, 137,053 
Southeyv.  805 
Shipwright  r.  Clements,  140 
Shrimpton  v.  Laight,  348,  349 
Silverlock,   Farina  v.  173,   173, 

313,  433 
Simon,  I'arbier  v.  1097 

Singer  Mt'g.  Co.  Kimball, 435, ^33 
v.  Wilson,  75)3 
Singleton  r.  Bolton,  040 

Smith,  Gleiuiy  r.   17,   289,  409 

943,  943 
Reg.  V.  233 


130 
1051 
1059 


Smith  r.  Reynolds,  301,  903.  904 
905,  OilO.  9(;7 
V.  Woodruir,      551.  553 
Smithson,  Dale  r.  4{iu.  545 

Stewart  /'.  539 

Snowden  r.  X(;ali,  891,  893,  893 
Soeiete   des   heriliers  Lie- 
big,  Deniot  r.  1193 
Sohier  r.  Johnson,  813 
Sohl  V.  Giesendorf,  45,  145,  385 

057 
Sornborn  r.  ^len^er,  1114 

Souris,  Ileidsieckw.  1140 

Soutiiern    r.    Howe,    (case 

cited  in)  170 

Southey  ;■.  Sherwood,  805 

Soulhorn  c.  Reynolds,     (;00,  700 

Spear,     Amoskeag      Ml'g. 

Co.  r.  10,  11,  59,  310,  338,  343 

343,    341,  345,    414,    450,  513 

044,  750 

Spear,  Fowle  i\ 

Spence,  Williams  r. 

Spencer  r.  .Menier, 

('.  Peigney, 
Spotliswoode  r.  Clark, 
Starkweather,  Cook  e. 


085 

1133 

1133 

879 

390,  915 

985 

Staudinger  r.  Staudingcr,       587 

State  of  Missouri  v.  Gibbs,     971 

Stephens  r.  De  Conto,      99,  903 

903,  904 

r.  Peel,  373 

Stetson,  Town  e.  055 

r.  Winsor,      30,  531,  594 


873 
539 
899 
045 

87 


Stevens  r.  Paini , 
Stewart  r.  Smithson, 
Stiir,  Ingram  i\ 
Stokes  r.  Landgrall, 
Stone  r.  Carlan, 
Stonebteaker     r.      Stone- 
breaker,  474,  009,  803.  933 
Strender,  Michel  v.  1135 

Stubbs  V.  Astier,  1133 

Such,  Clemens  c.  880 

Suirivan.  Byass  t\  384 

Swift  V.  DeV,  105,  3(i8 

Sykcs  V.  Sykes,  280,  000 

T. 

Taconet,  Bertin  fl.  1140 

Taconnet,  .laluzot  V.  1155 

Taintur,  Rodgors  v.  bOl 


^ 


610 


Taijli:  of  Cases. 


W. 


Taylorn  Ciuix-ntcr,     4,  5,  (i,  80 

112.  41',',  448,  U14,  1001 

Wal(!Ott  )'.  Walker,                 805 

«.  Carponter,         5{»,  1 10 

Walker,  Cheavinw.                  570 

2.j4,  2o.s,  283 

Collins  Co.  V.             458 

V.  Carpenter,  57,  58,  1 1;{ 

Walcolt  r.                  805 

2a«,  2;J7 

Walmesley,    Ainsworth    v.    130 

v.  Gillies,                     073 

300,  470,  740,  1005 

Ilarrisoa  v.    00,  343,  300 

Walton  V.  Crowley,  133,  303,  303 

408 

353,  419,  420 

V.  Taylor,     350,  351,  454 

Ward,  Tonge  c. 

Teissier,  Brii-ard  /•.                1077 

Warren,  Marsli  v.                     »j3 

Dorvuiilt  v.              1090 

Wattles,  Bininger  o.               053 

Thibierge  r.  Oiipont,             1098 

Weaver,  Franks  c.                   338 

Thomas,  Collou  v.                   944 

Webster,  Routh  r.                   580 

i\  Lovie,                  1070 

r.  Webster,                780 

Thompson,  Crawshay  c.         381 

Weed  r.  Peterson,  348,  478,  807 

:J37,  440,  930 

Wei,  Lawson  (\                      1170 

Isaac;  on  c.              73 

Welch  r.  Knot,        174,  175.  170 

Thomson  v.  Winchester,  043,  938 

Wells,  Felridge  c.    213,  351,  541 

Tisseron,  IJournhonet  c.        1 153 

040.  ()47 

T'ssior  r.  liOcampion,            1078 

Werle  i".  i-^mw  Clicquot,        1148 

Toland,  Scovllle  i\                   490 

Weston    ('.    Ketcbam,    813,  814 

Tonj^e  i\  Ward,                       473 

815 

Tournachon  v.  Tourna- 

Wheeler,  Hennessey  v.            571 

chon,                                    1101 

ic  Wilson'Mfg, 

Town  V.  Stetson,                      055 

Co.  r.  Shake- 

Tribonillet  v.  Mounier,          1053 

spear,     222,  732,  873 

Truefltt,  Perry  v.                 1,  531 

White,    Comstock   e.      178,  543 

Trust,  Gouraud  v.                   031 

790 

Tuclcer  i\  Turpiu,                   705 

Lazcnby  r.  520,  (ilO,  849 

Tucker  Mfg.  Co.  n.  Boying- 

AVickers  r.  Frioii,                   1157 

ton,                430,  734,  735,  973 

V.  JIarcband,           1157 

Turner,  Beard  i\    373,  505,  1013 

Wilcox  r.  Anbineau,             1103 

Turpin,  Dent  v.                       705 

Popliam  i\          202,  970 

Tuclior  V.                    705 

Wilder,  Laird  v.                     504 

Tynbergh,  Messerole  «.          291 

i\  Wilder,                   984 

1018,  1019,  1030 

Wilkes,  Dayton  v.                  789 

Willems,  Sargent  «.              1153 

U. 

Williams  v.  Johnson,      423,  083 

t.  Osborne,              584 

Uhler,  Glendoa  Iron  Co.  v. 

V.  Spencc,                 085 

734,  735,  720 

Williamson,  Hichards  v.         183 

Upmann  v.  Elkan,                  224 

Wilson,  Singer  Mfg.  Co.  v.    733 

Uzieili,  Exp.                            931 

Winchester,  Thomson  v.        043 

928 

V. 

Winsor  v.  Clyde,       30.  151,  521 

594 

Vergniolles,  D'Invillo  o.        1087 

Stetson  V.      30,  521,  594 

Vick,  Edelsten  v.     131,  453,  537 

Wolf,  Lea  o.     309,  392,  722,  723 

731 

1031 

Viffnier,  Denis  0.                   1130 

Wolfe  r.  Barnett,   27,  28,  74,  593 

Viilarct,  Prudhon  v.            11356 

1029 

Vowinkle,  Ilostettcr  v.  347,  394 

V.  Burke,  34,  182,  39(i,  507 

380 

010,  004,  005 

I'   '''.- 

Il    - 

It    ^  i* 


Table  of  Cases. 


511 


"Wolfe,  V.  Goulard, 

"Wolff,  lieynal  v. 

"Woodruff,  Smith  v. 

Woods  V.  Sands, 

Woodward  v.  Lazar, 

Woolam  V.  Ratcliff, 

Wotlicrspoon  v.  Currie,     29,  391 

477,  479,  480,  714,  715,  716 

V.  Gray,  1011 

Wright,  Blackwell  v.        3i>,  397 

398,  399,  483,  738 


'*24,  048 

1185.  1205 

551,  552 

153 

IGl,  1(52 

301 


Wright,  Heath  ik 
Phalon  V. 

Y. 


538 
547,  051 


Young  V.  JIacrae,  050 

Z. 

Zeilcu,  Ellis  v.  387,  430,  500,  828 


Rj  1 

'  In 
„  Si- 


111 


INDEX. 


THE  NUMBERS  REPEK  TO  THE  SECTIONS. 


Abanclonraont.  44  4'?    1100   n-n    ^^o^    ^.„ 

^'"ss;:i4V4e""'  '''•  '«•  '«■ '« 

"^'  "•  41-5;  sr=!?;  Jli.lbo'"''  '"'•  '''•  ^".  ^". «',  «4, 

Account.     See  Damages. 

Acquiescence,  55  fo  ?7,  "1005,  1077,  112G,  11G7   1171    una   .onp 

IS  a  revocable  license,  50,  G3  64    '  '  '  ^^^^ 

an  abliorrent  defense,  58,  1206 

knowledge  necessary,  02 

cannot  be  inferred,  (j4 

issuing  of  a  "caution,"  65 

by  adoption,  80,  95,  101,  1059,  1074    1141    1154 
by  appropriation,  98,  403  ''*.  ^  ^^i,  n,,4 

by  license,  92 

by  operation  of  law,  85   97  00  101    lor  lAn  -,,..  .. 
by  mu-chase  ;  See  Assi^^nnient         '  ^^'  ^^^'  ^^^'  ^^^ 

SppTf^''^'.  ^'^^'102,  104,  il71 
oee  Partnership. 

l^Oo  ;  See  Infringement;  Kemedies.  '  ' 

against  agent,  224,  1151 
auctioneer,  1002 

^^  [513] 


H 


'I 


514 


Index. 


II     !!t 


Action  against  uiiuiufiifturcr  of  spurious  tradt'iuarlcs,  177,   1146, 
ll.jl,  US.-),  120.-) 
vciulor,  170  ;   1000  to  1005 
wliartiuLrcr.  ISO,  !):)1 
by  purchaser,  170,  11.-):] 
use  of  gcnuiiii'  trjidcniark  on  spurious  goods,   171,    174, 

181,  1104.  11(58,  117:5 
clanger  of  judieial  proceedings,  183 
sale  of  labels  unattiiched  to  goods,  172,  17;],  4o3,  1070 
reproduction  of  trademark  l)y  retailers,  1184 
custom  of  manufacturer  to  affix  ordered  marks.  177,  184 
custom  to  use  another's  marks,  382,  1108,  1177 

Acts  of  Congress,  p.  407 

Address,  as  a  trademark,  501,  740 

Administrators  and  Executors,  .50,  71,  85,  99,  601,  791,  794 

Adoption,  80,  95,  101,  1059,  1074,  1141,  1154 

Advertisements,  \).  34 

See  Publications. 

Agent.  224,  47:2,  708,  873,  1151 

"vl/ny//  "  cement  case,  31,  308,  719,  720,  731,  731a,  1014, 1015,  1016 

Alienation.     See  Assignment. 

Aliens,  110  to  115;  1079,  1083,  1133 

Allowance,  extra,  233 

Almanacs.     See  Publications. 

"■  Alidce  thrmiV  case,  1134 

-•.t.  M.  (7,  "630 

".1.  M.  Co.;'  036 

"yb//rW.yw/,"'  030,  1023 

''Aiififo/ia''  liquorice  case,  93,  94,  316,  705,  706 

Anchor,  emblem  of,  359,  383,  1110 

•"^1.  jVo.  1."  ploughs,   056 

Anonymous  name,  880,  1076 

''  Aiiti(jU(i,rlim  Biiok  Store''''  case,  1033 

''  Apoll'niavlH  Woter,'''  737 

A]ipearance,  general. 

See  Imitation;  Form;  Color;  Labels. 

Ai)pro|)riation.     See  Acipiisition. 

•'  A<iiii(  dlriua''''  case.  1178 

''Aram ill f/o  M'dh''  583 

Arms,  coat  of.  as  a  trademark,  373,  504,  1154,  1158 

'' Aruimt'ui    Schieikim    Schnappa''  cases,   27.  28,   33.   34,   74,   182, 

393,  394.  396,  424,  495,  496, 
567,  593,  010,  048,  001,  663, 
603,  064,  665,  1029 


f 


Index. 


015 


a 
<< 

A 

<t 


Assessment  of  tlama-rfs.     See  Damao-ps 

Assignment,  l^O  to   1.74:  87,  88.  ^  1(J4,  1081,  1089,  1141,  114a 
1H)8,  1214,  1->18  ' 

Association,  2(il,  094,  71(5,  7.ji),  1010 

See  Oiigin  and  Ownersliij). 
Attaclied,  marks  not,  1070 
Attaciinient  for  contempt,  194 
''At  t/ic  JittU-  pot'''  case,  1074 
Auctioneer,  1002 
See  Vendor. 
All  (jra))d  Saltan''  case,  1105 
Au  jtelit  jiof'  case,  1074 
Austro-IIungarian  Convention,  p.  493 
"  Au.t  vmia  gourmetn  "  ease,  1093 
X.  A7a  1,"  ploiiglis,  050 
Ai/er's  Cherry  PcctoraV  case,  075 
-Baha<^Tho>^nd^ lowers-  case,  213,  354,  431,  540,  541,  C4C 

'' Bank  of  J^ndon''  case,  823 

Bankruptcy,  131,  135,  143,  153 

Barrels,  lj|;^f''-'li'u-  shape  of,  as  a  trademark,  983,  985,  980.     See 

Bass  &  Co.  's  case,  376 
Bee,  emblem  of,  1103 
Belgium,  treaty  with,  p.  488 
'' BcJgraria''  magiixine  case,  882 
"BelPs  Life,"'  newspaper  case,  898 
''Bensoii's  Capcine  Plasters'''  case,  572 
'  Bcmlne  parfntneo  "  case,  1098 
''Bert in  (/lores  "  case,  1140 
"  Best  "  iron  case,  1038 

Bill  in  clKincery,  effect  of  untrue  allegation,  209 
scope  and  design  of,  5 
in  Massachusetts,  958 
"  Bismairl-''  coMiu-s  case,  391,  1018,  1019,  1020 
"  Blood  Searclur  "  case,  588 
"  Bloom  (if  Youth  "  case,  504 
"  B.  Ko.  J,"  ploughs,  656 
tJour,  device  of,  203 

Hooks.     See  Publications ;  Copyright. 

are  not  Labels,  490 
Borders  of  cloth,  1103 


t( 


51 G 


Index. 


if 

if-  w 


If-  Mi 


''Ihtot,  ^r«»t^?e"ciises,  1071,  1097 

Bottles,  peculiar  shape,  as  a  trademark,   98.1,   10G7,    1097,  1183, 
1187.     See  Form. 

sellinfj  sod'i  water  in  bottles  formerly  used   by  others, 
174,  175,  17U,  181,  1108,1173 
•'  Boufji«  de  Vefoile  "  case,  1170 
"/i(>!;««"  and  "'B/Dlllne''  case,  140,  142,  378,  379 
Boxes,  style  of,  as  a  trademark,  159.     See  Form. 
Brand.     Seo  Devices. 
*'  Bi'ittaina''''  newspaper  case,  897 
''Broolbjii  White  Lead  Co.'"  case,  357,  583 
^'Bimeh/"  pipes  case,  006,  766 
Buildings,  Names  of,  100-165;  134,  125,  147,  149,  153,  511 

See  Signs,  p.  370 

Vignette  of,  1073 

Burden  of  Proof.     See  Evidence. 

'■'■  B'D'fjesn''  Esxence  of  Anchovies''^  case,  603 

Business  Signs,  pp.  57,  370 

See  Buildings;  Partnership;  Signs. 

Buyers  of  goods  falsely  marked,  suit  by,  170,  1153 

Caduceus,  device  of,  1096 

"  Cninse  dcs  reports''''  case,  1087 

"  Cafe  dcs  Connoisseurs''''  cases,  1093,  1094 

"  Ciife  des  Gourmets'''  cases,  1093,  1094 

Cancellation  of  counterfeit  marks,  930,  1076,  1080,  1211 

"  C<ipciiui'"  and  "  Capsicin''''  case,  573 

"  CaporaV  cigarettes,  1037 

"  Cured  Jjimps  "  case,  1058 

"  Carmeline''''  liquor  case,  1187 

'•  Cannes,  emi  de''  cases,  1149,  1150,  1303,  1203,  1206,  1215 

"  Carrecmx  de  Massy  (tiles  of  Massey)  case,  1098 

Cases,  Tables  of.     See  Tables 

Cause  of  action,  p.  33  ;  170  to  184,  234,  831,  826,  931,  1002,  1070, 
1104,  1140,  1151,  1153,  1168,  1173,  1184, 
1185,  1205 

See  Infringement,  p.  137  ;  Remedies. 

against  agent,  224,  1151 

auctioneer,  1003 

manufacturer  of    spurious   trademarks, 
177,  1146,  1151,  1185,  1205 

vendor.     See  Vendor. 

wharfinger,  180,  931 
by  purchaser,  170,  1153 


I'      •!:■ 


.-*: 
*' 


Index. 


517 


use  of  ^entiine  tnulcniark  ..n  spnrions  jroods    1 7 1 
1-4,  181,  1104,  iKiH,  mt;]  ^         '  ^''• 

tlan-rerof  jiulifhil  proomlin.r.s  183 
«ile  of  uimttaclH-.i  lalicN,  173,  1T;{.  4;i:j    1070 
^       roimnlncuon  of  tradunark  by  retailers;  1 184 
Cause  of  action,  custom  of  ,„,,„„•,,,„,,,,  ,„  ^.^^^  ^,,^,^.,.^,^j  ^^^^^^.^^.^ 

custom  to  u«o  otiior's  marks,  282,  11U8    1177 
Ciaucery,  jurisdictiou  of,  yo,  390. 

See  Injunction, 
bill  in  chancery,  5,  208,  958 
Change  of  ^mark,^  when  ordered,  10o4,    1007,  1090,    1111,  112,, 

"  Charhontl^  Park''  c&scs,  1173,  119G 

"  Cliaritij''  (a  drama),  883,  884 

"  Charter  Oak''  stoves,  090 

^' Oharfreune'' cases,  12ld 

Cheat,  using  false  marks  a  cheat,  321 

"  Cherry  Pectoral"  case,  075 

'' Chinese  Linament-  case,  8,  9,  114,  301,  341,  449 
Chlorodi/ne'"  case,  871 

"  ChocoIatMenier"  cases,  1160,  1107,  11(59,  1171 

"  C/mV//s  Zo;,^Zo;i,"  hats  case,  1158  ' 

"  Christy's  Minstrels'"  case,  580 

"  Chrysty's  Best  London"  hats  case,  1158 

Circulars.     See  Publications. 

City,  name  of.     See  Geographical  Name 

Clerks,  t''^5;j."^«  of^Jormer  employer's  name,  1123,  1125,  1131, 

See  Signs. 
'^  Clvb  House  Gin, "  649 
Coaches,  names  on,  87,  88,  3?!f),  594 
Coat  of  Arms  as  a  trademark,  373,  504,  1154  1158 

''Coats  ."428 
"  Cocm;««,"  087 
"  Comatim,"  689 

'' Colonial"  Ass.  Co.,  1012 

Colorable  infringement.     See  Imitation 

Colo™.  „,  -™le,,,a..,^I.„,  «,.  «,,   ,00,,  ,„,,,   ,„3,_  ,„„,_ 

See  Labels. 
Combination  of  words  in  common  use,  009,  1029  1140   1195 
Common  Use.     See  Words ;  Acquiescence ;  Prior  Use. ' 


»!",l'i(T{ 


■I 

I' 


l(    '  ,' 


IS    I 


:    vW, 

If 


I 


} 


518 


Index. 


Conipliiinant  in  ciiuity,  must  bo  free  from  wrony.     See  ^Iisrepr<>- 

scntatioii. 
Compromise',  ellect  of  negotiations  for.  28") 
Concurrence  dClovule,  lOTO,  lOMO,    lOMl,  lOsiJ,  101)0,  lOO,";,    100(1, 

101(0,   1100,  ri;j4,  11:51),  1148,  u.jo,  nrvi,  iir*."),  no."),  iih;), 

1180,  1310,  1113,  13  lU 

Congress,  acts  of,  p.  407 

"  Cm'jrenH  Spring  Water'"  case,  147,  148,  140,  Go9,  839,  081,  083, 

1030 

Construction  of  stirtutes,  957  to  974 
Contempt,  190  to  195,  Oil 
'*  ConwrPtJt  (diiiiiiitiiircH,"'  103G 
Conventions  and  Treaties.     See  Treaty. 
Coi)yriglit,  300  to  30;J ;  4,  33,  490 

not  like  a  tratlemark,  4,  33,  300 

labels  are  not  books,  490 

Corporate  name,  GUO  to  030 ;  97,  109 

Corporation,  name  of,  COO  to  030 ;  109 

trademark  of,  on  dissolution,  97 

Costs,  308  to  336 

"  Court ri(t  Flax''^  case,  545 

"  Crime  iVArgenf''  case,  1145 

"  Creme  de  riz^''  case,  1130 

"  Creme  Orientale''''  case,  631 

Crest,  device  of,  373,  504,  1154,  1158 

Crimes,  330,  231,  333,  9G3,  p.  471 

"  Cross  Cotton''  case,  191,  193.  193 

Crown,  device  of,  3G0,  359,  369,  674,  751,  966,  1038 

"Crown  Seixo"  wine  case,  3G9,  370,  585,  586,  707 

Custom  of  manufacturers  to  affix  ordered  trademarks,  177 

evidence  of,  to  violate  trademarks,  283,  11G8,  1177 

See  Acquiescence. 

"  Cy?tKf7«' "  glass,  645 

Cylindrical  form,  11356 

Damages,  335-351;  66,  77,  1051,  1052,  1054 
See  Discovery. 

elTect  of  delay,  66,  77.     See  Delay. 

elTect  of  intent.     See  Intent. 
"  Day  tD  Martin's  Blading  "  case,  2,  300,  325,  411,  601 
''Decl-er  Piano''  case,  023 
Deception,  p.  80 

Sec  Evidence;  Intent;  Imitation;  Misrepresentation. 
Deicnses,  pp.  80,  81,  83 


.  a- 


Index. 


nio 


Defenses,  Misrojirfsontafinii   by  rdmplainiint.     Sec   :\ri.ropvo«'.n- 
tiitioii. 

Laches,   l-iccnsi',  Ac,|uics(cii('i',  Liinil:iiir)ii.     Sec  tliosu 

titles. 
Want  ol  intent.     See  Intent. 
Prior  Use.     See  i^ij:),'  Ise. 
As  to  wliellier  words   in  eoianinn    ii>e,    i^n-nerie   tei'ins, 

(lesc-ri|)tive  names.  ^■eouri.|iiiie,il    names,  A;e.,  may 

be  trademarks.      See  Words;   Xmne. 
custom  of  manufaetnrers  to  atlix   ordered    iradeniarks 

177 
cu.stom  to  use  anotiiers  trademark,  2S-,>,  IKiS,  1177 
equality  of  spin-i,, us  «,r(»()d.s.     See  (Quality. 
aliL'nai,'(;  of  owner  of  the  mark.      See  .Miens. 
See  also  Deeopiion;    Imitation;    Injunction;   Partner- 

shi]);  Publications;  Signs,  &c. 
Definitions,  1  to  ;]u 
Delay,  cirect  of,  on  damages,  (50,  77 

Sec  Damages, 
ou  costs,  77,  li)l 

See  Costs. 
injunction,  CO,  08,  72,  7;!,  74,  77 

SeoLaclies;  Limitation;  Acquiescence. 
'■'■  Democrat k  licjnthlkmi  Xrw  /■Jro'"  case,  S!)0 
Descriptive  names  and  marks.  ('.40  to  G7.>;  U)r,r>,  U)r,H,  lOfil    1(1(58 
1071,    l()7;j,    1074,1077,    1081,101)1,    1{)U8,    llOS  '  ll^y' 

See  AVords;  p.  305 
Demurrer.     See  Pk'adinjr. 
^'Dcmcated  Cod  FM"  case,  655 

Destruction  of  counterfeit  marks,  930,  1070,  1080,  1311 
Devices.  200  to  204 ;  359,  372,  370,  382,  428,  094,  098,  980,   1035 
1050,  1002,  1078.  1113,  1130,  1154,  1158,  1102,  1181,  1194       ' 
See  Imitation;  p.  301 

"■Diamond  State'''  matches  case,  195,  308 

Dimensions.     See  Form. 

'' Divine  Wata-''  case,  1178 

Discovery,  270  to  274;  224 

Dramas,  names  of.     See  Publications. 

'■'Dried,"  055 

^'Dr.  J.  M.  Lindscj/s  Improved  Blood  Searcher'''  case,  588 

"2>/'.  Johrmn's  Golden  Ointment''  case,  433,  1030 

'■^ Dr.  JoJinson'n  Yellow  Ointment'''  case,  040 

^^  Dr.  Morse's  Indian  liooi  Pills"  caso,  178,  543,  790 

"i?r.  HooJce's  Golden  Ointment"  case,  433,  1030 


I  1 


^, 


IMAGE  EVALUATION 
TEST  TARGET  (MT-3) 


'•  ,^ 


7^ 


fA 


1.0 


I.I 


21    12.5 


■^  1^    |2.2 


"^1^ 


Wuu 


m 


1125  |U.||.6 

< 

6" 

► 

oil. 


^'4»*' 


/. 


Hiotographic 

Sciences 

Corporation 


23  WIST  MAIN  STRUT 

WEBSTIR.N.Y.  MSSO 

(716)  872-4S03 


^^        ^\     '^\ 


^^^' 


r)2() 


I.XDEX. 


1% 


I  I 


1 

i.  .1? 


I:    !I» 


'•  Dr.  StohchreaUfH  MaJkincn,'"  009 
''Dr.   Widar^H  JliLvim  »/  Wild  Cherry,''  533 
''  D'tmuH  ;'.2  "  case,  10.>4 
"Durham"'  mustiird,  !)()0 

tobacco,  aOO,  728 
*■' EddcourVn  Hop  l^upjilcment^''''  506 
''  Eau  de  Botot  "  cases,   1071,  1097 
"  Eau  dc  hi  Florulc''  case,  1121 
"■  Eau  de  Miilhfie  dcs  Cannes  "  cases,  1149,  1150,  1202,  1203,  1206, 

1215 
"  Eau  dentifrice du  Doctcur  Pierre''''  case,  1174 
'    T  HI  de  toilette  de  Lubin  "  case,  1201 
■  j^      <Z<'ci/(6' "  case,   1178 
"  Ell  cciirhte'"  case,  1116 
'*  Ery    ■?  ■^p'lil "  cases,  1097,  1126 
"/'?  '.':ue  antifjlaireitx''  case,  1213 

Em.  ..  Sec  Devices. 

Employee,  use  by  employee  of  former  employer's  name,  1123, 
1125,  1131,  1250,  1208 
See  Signs. 
"  Eiicrc  de  la  jwtite  virtu  "  case,  1055 
''•  Eiicre  indienne'"  case,  1133 

England,  treaty  with  France,  1157,  1180,  1200,  1204,  1209,  1214 

United  States,,  p.  497 

Engravings.     See  Labels. 
Equality  of  goods.     See  Quality. 
Equity.     See  Injunction. 

will  not  regard  with  favor  one  who  secures  another's 
trade,  390,  30 
See  Concurrence  df'loyale. 
Erasure  of  counterfeit  marks,  930,  1076,  1080,  1211 
"  EsteourVii  Hop  Kxseiice,''''  506 
"  A7/</w/)irt/i "  stockings,  680 
''Eureka"  shirts,  C91 
"■  Euxesin''''  case,  71,  103 
"  EccretVs  Premier  Blacking  "  case,  230 

Evidence,  280  to  297,  432,  435,  450,  406,  471,  476,  483,  793,  1064, 

1078,  1127 
of  Intent.     Woe  Intent. 
of  actual  deception,  when  requisite,  286,  280,  296,  297, 

840,  343,  346,  349,  300,  368,  309,  377,  381.  389,  391, 

395,  399,  400,  401,  447,  451,  494,  580,  850,  006, 

1064,  1078 


^ 


Index. 


621 


E.\a!?frcratP(1  stfttcmonts  in  advertisements,  &c.     See  Misrepre- 

soiitation. 

''Emdhj  Ticelce  V,ir<l><,''  318 

"A'ttt/.swr"  soap  case,  304,  G80 

Exclusive  Right,  300  tr  310;  p.  99;  1100,  1170,  1181 

Executors,  50,  71,  85,  99,  001,  791,  794 

Exemplary  damages,  230 

"  Extract  of  meat  "  cases,  054,  1181,  1193 

''  Extradum  ainiis''  canes,  054,  1181,  1192 

''Fa(oiide"  (style  of),  1077,  1108,  1135,  1183,  1200 
See  p.  379,  Art.  17. 

''Faith "  as  name  of  a  drama,  883 

Falsehood.     See  Misrepresentation. 

False  Pretences.     Indictment  for,  230 

False  Represeojtation.    When  necessary  to  constitute  infringe- 
ment.   See  Imitation. 
By  owner  of  trademark.    See  Misrepre- 
sentation. 

False  Statements.    See  Misrepresentation. 

Family  name,  1200 

See  One's  Own  Name. 

Family  seal  or  arms,  1154 

Fancy  names,  080  to  098;  p.  301;  1055,  1001,  1070,  1088,  1093, 
1094,  1104,  1115,  1110,  1121,  1124,  1127,  1130,  1133,  1134 
1135,  1139,  1142,  1145.  1155,  1170,  1187,  1190,  1191,  1195, 
1190,  1199,  1213,  1219  '  '  »  . 

''  Ferro-Pho^phomteil  Elixir  of  Calisaya  Bark''  case,  76,  067.  068. 
GG9,  070,  072  »      .        >        » 

"  Feuille  de  riz""  case,  1147 

Fictitious  name,  880,  1070,  1080,  1101 

Figures.     See  Numerals. 

'' Fils dWlsace''  case,  1134 

Firm  names.     See  Partnership. 

''  FlaveWs  Patent  Kitchener,''  530 

''Fhr  Fina  Prairie  Superior  Tohac,"  395 

"  Florida  "  and  "  Fliioriile  "  case,  1121 

' '  Ford's  Eureka  Sh irts,  "091 

Foreign  Words,  315  to  318;  1116,  1128,  1178,  1142,  1188 

Foreigners.     See  Aliens. 

Forgery,  232 

Form,  159.  SGI,  387,  497,  980,  983,  985,  980,  1003,  1007,  1069, 

10-8,  1083,  1085,  1093,  1094,  1100.  1109,  1134,  11356, 

1103,  1107,  1109,  1174,  1183,  1187 


I 


i  1!^ 


!'■.  ii? 


1^1  i 


;i  . 


522 


Index. 


rormi<  of  U.  3.  patent  ofRcc,  p,  478 

Franci-,  treaty  with  Enirland.  1157,  1180,   1200,  1204,   1209,  1214 
United  States,  p.  491,  1300,  1214 

Statutes  of,  p.  oTO 

Deeisions  of,  p.  oTO 

Fraud,  p.  102 

See  Intent;  Exclusive  Right;  Misrepresentation. 

''  Galea''  ghiss,  04.") 
"  Oazof/ene'''  case,  1008 

General  ajjpcarance.     See  Imitation;  Form;  Color;  Labels, 
(ieneral  assignment,  121,  l;5."i,  142 
General  principles  and  deiinitions,  1  to  30;  1103 
See  Trademarks. 

"  Gcituliic  Yaidic  /S'w/;/,"  08;?,  G85 
Generic  Names.     See  Descriptive  Name;  Words. 
Gcograpliical  Names,  TO.")   to   730;  32,  413,  590,  823,  1057,  1092, 
1099,  1100,  1131,  1133,  1143,  1310,  1319;  p.  304 

"  Gluee  thrmd;''  808 
"  Gkndoii  "  iron,  725 
"  Glaijhhr'  starch,  714 
"  GoldMohiir  G7'3 
"  Guillen  Criitni  Cifjfirs'^  case,  555 
"  Golden  Ointment,''  433,  1030 
"  Golxh')!  Friction  Matches  "  case,  339,  534 
Good  will,  14(i,  904 
See  Partnership. 

"  Gourard'n  Oriental  Cream  "  case,  031 

"  Gocan*"  case,  428 

'*  Grande  CIi<irtrciine  "  cases,  1319 

Great  Britain,  treaty  with  France,  1157,  1170,  1200,  1204,  1209, 

1214 
United  States,  p.  497 
"  Great  MoguV  cards  case,  410 
"  Grenade  Siirup,"  317 
"  Gmno"  cases,  1170,  1182,  1186,  1191 
"  Guano-phoji/ioasote"  case,  1170 
''  Guerre  (I, I„l>"  case,  1139 
"  Gninea  Coal  Co."  case,  09,  557,  590 
'■'■  IlaU'n  Veijetahle  Sicilian  llair  lienewer"  Oil 
'^  Uarvei/'s  Sauce,"  GIO 
"  Ilelioti/pc,"  iiQd 
'"Hero"  and  " //c/w/ie"  jars,  375,  589 

♦'i/;  u.  o,"5io 


Index. 


023 


Hidden  mark,  1001 

"  Ifolhrofd'-s  "  school  apparatus,  G53 

"■  ILilhunii/'.-i  Pills."  .■);!,■) 

IIorsL'.slioc,  device  of,  OT-l,  10;)8 

Hotels.     Sec  i;iiildin<.s. 

'■'•  ILnmhobl  Clotli"  case,  1091 

"y/./^r(''«y;/^/(/7/"  case,  124,  125 

'■  llnre  Sririiuj  Mic/iiiw''  cases,  520,  1200,  1209,  1214 

'' ITinr(iii(i\s  Mirtitrc,"  500 

Ignorance.     See  Intent. 

Imitation.  ;)25  to  401;  220,    1054,  10(](J,    1077,    107^    1087    108S 
10!»:!,  Km.  10%.  1105,  1112,  in:!.    1117     U-)     1    r'  \\'- 

]^^^  Y^^  nM^.  n,d,  u:^i  u:.i  ^{{^  I'n':  nS  11;;;; 
iio4;!2n:;2;;;:;2i^:;^ii:;^;:^""^'  '^'^^'  '"'-^'''^ 

SceHevices;  I'onn:  Lahcls;  Letters;  Name;  ^'umorals; 
rartnership;  Signs. 

Imposition.     See  -Misreprcseutation. 
Imjirint.     See  Labels. 
'•  Ii<(liaH  ink''' casL',  11 03 
Indictment.     See  Crimes. 
Infant,  infringement  by,  218 
Infringement,  p.  137 

See   Cause  of  Action  ;  Name  ;   Words  ;    Letters  ; 

Numerals  ;    Labels  ;    devices  ;    Publications  ; 

J  artnership  ;  Signs  ;  Form  ;  Concurrence  de- 

loyale  ;  itc.,  &c. 
Initials,     See  Letters. 
Injunction,  410  to  4:18  ;  182  ;  p.  ;ja9 

elTect  of  delay.     See  Delay, 
lajury,  necessity  of  proof  as  to  actual  injury.    See  Lijuuctiou. 
'•  I/d:  "  is  a  generic  term,  1055 
"  Ink  of  the  little  rirfxe  "  case,  1055 
Inns.     See  Hotels. 

^°*''"/.;M:!^"!ol;;."^i'f.\  "^•^'  -'*^^'  ~^i'  ~'^2, 9C2. 1054,  no9, 1120, 

Interdict.     See  Injunction. 

Invention,   name  of,   10(W,   1071,   1081,   1108,   1173,   1180,   1183, 
ll!i2.  111);!.  1200,  120V,  1209 
See  Patentee,  name  oL 
Inventor,  7,  28,  :!01 

^''V£!S!\i!!7!\m'  ^^^^'  ^^^^'  ^^'^'  ^^^^'  ^^^^'  ^^^- 

^'  Irving  Uuuse,"  IGO 


524 


Index. 


".7(y^*"  paper,  cases  1088,  1117,  1139,  1175,  1217 

''.lihn  BnJV^  newspaper,  897 

''Johnson's  Yellow  Ointment,''  040 

Joint  tradeinurk,  1113,  1141,  1144 

Journals,  names  of.     See  Publications 

^'Jiuly'"  newspaper,  005 

'' Julienne"  &o\x\^,  1033,  1030 

Jurisdiction,  201,  493,  G33,  791,  1170.     See  Injunction. 

of  Freneli  courts,  1170 

of  U.  S.  courts,  201 
«'  K  "  silosias,  757 
'' Kat/uiiron,"  538 
''  Kcntuchj  Hemp,"  711 
"■  KeydoHC  Line,''''  594 
Knowledge.     See  Intent. 

Labels,  490to4!)8;  1h4,  lOGG,  1072,  1073,  1070,  1085,1093,  1094, 
1005,  1090,  1102,   1109,  1112,  1137,  1138,  1142,  1151, 
1104,  1109,  1211,  1213,  1215,  1219;  p.  371 
See  Imitation, 
genuine  labels  on  bogus  goods,  171,  174,  181,  1104,  1108, 

1173 
selling  unattached  labels,  172,  173,  433,  1070 
lithographing  spurious  labels,  1151,  1185,  1205 
registrai ion  of  labels.     See  Registration;  Trademark  and 
Label  Statutes;  Patent  Office  llules. 

Laches,  505  to  509;  1171.  1200 

See  Acquiescence;  Abandonment;  Limitations. 

'' Lachawanna'''  coal,  713 

''LniriVK  Bloom  of  Youth  "  case,  504 

''Dike'"  glass,  045 

''La  Trappistine"  case,  1135 

"  iMgenbi/'s  Harvey's  Sauce,"  010 

Leaf,  emblem  of,  1130 

"L'eau  lie  Botot  "  cases,  1071,  1097 

"Leopold"  cloth,  090 

"  LeopokMall"  Kainit,  718 

" Les proprietaircs  de  vignoliles"  case,  1078 

Lettering,  style  of,  as  a  trademark,  159 
See  Labels. 

Lettors,  510  to  514;  050,  074,  751,  757,  1050,  1077,  1110,  1175 
See  Imitation. 

License,  520  to  521 

See  Acquiescence. 

"  LivUi/a  Extract  of  Meat  "  cases,  054,  1181,  1193 


Index. 


525 


Limitation  of  time  to  begin  action,  525  to  526;  1065,  1206 

See  Acquiescence  ;  Laches. 
"  Lindsej/n  Improved  Blood  Searcher,"  588 
Lithograpliing  spurious  labels,  1151,  1185,    ^05 
Lithographs.     See  Labels. 
"  Liqueur  da  Mont  CarineV  cases,  1115,  1187 
"  Liquor  de  la  (irande  Chartreuse''''  cases,  1219 
"  Little  Red  Booh"  case,  885 
'•  Live  aiul  Let  IJve  "  case,  945 
''Liverpool''  cloth,  090 

*'L.  7.."  whiskey  case,  02,  287,  865,  466,513.  514 
"i%(Z  C<?«^m/e"  case,  1119 
'^  Lhi/(l  Fran^ais"  case,  1119 
''Lloi/d's  Eiixenis''  case,  71,  103 
^^  London,  Bank  of''  case,  823 
^'■London  Conveyance  Co.,''''  826 
^^ Lojulon  D'lxpensary"  case,  1095 
''London  Bock  Gin,''  052 
'' London  Journal'''' case,  8QQ 
*'  London  K^nure  Company  "  case,  413 
"■  Luciline-^  case,  1127 
*' McCardel  Home''  case,  03,  92,  163,  194 
Magasdues.     See  Publications. 
'* Mag'tcnl  Beaut'ijier ,""  021 
"Jlfasrw  C'<re"  (pills),  885 
"  Maimn,'"  1090 
''Mammoth  Wardrole,"  G5S 
Manufacturing  spurious  labels  for  others,  177,  1146,  1151,  1185, 

1205 
*' Marie-Blnnche''  silk  case,  1x55 
Marks.     See  Devices. 
Marks  not  attached,  172,  173,  433,  1070 
"Mark  Tirain'''  case,  886 

"Marquis  de  T^orme,  Sillery  Mousseaux''''  case,  1076 
"  Mason  Jar  of  1872  "  case,  509 
Master  and  Servant,  use  of  former  employer's  name,  1122,  1125. 

1131,  1150,  1208 
"3L  C."  plates,  511 
Measure  of  damages.     See  Damages. 
"  Medicated  Mexican  Balm,^^  531 
*' Meen  Fun,'' Hii 


r.20 


IXDEX. 


,» 


'I  ■' 


.  1 


ii 


Pi 

m 


!' 


s 


824,   1070,  1080,  HOC; 
See  Intent. 


".lAVAw,  w»f  <^"  cases,  lUJ),  ILIO,  1203,  1203,  1200,  1215 

''  Mirrtmnrk  I'riitts,"  ;5.'52 

Mineral  watci-s,  namos  of,  055),  727 

"  Muiiiic,  Dciir  Milt II ic  "  (song),  880 

Misrepresentation,  ri;50  to  572 ;  152, 
p.  808 

Mistake,  trademarks  used  tlirongh. 

"'Movt  &  C/Kinfoii'ii'U-asc,  1189 

''Moliitr/'  ploughs,  708 

Monograms.     See  Letters. 

*■' Mttiitnfjniic"  overcoats  case,  1197 

''  Muiit-CarmeV  liquor  eases,  1115,  1187 

'■^  Morrisoiis  Unirerml  Midicine^^'' ^"iX 

''Mrs.  Winxlow's  Soothiiaj  Syrup"  case,  21,  98,  290,  494,  553,  504 

Names. 

a.  In  general,  580  to  594;  1103,  1207 

6.  How  far  one  may  be  restrained  from  using  liis  own  name 
in  business,  GOO  to  023;  p.  373;  1000,  1077,  1080, 
1081,  1088,  lOflO,  1111,  1118,  1119,  1135«,  1140,  1148, 

1189,  1212,  1210 

e.  Corporate  Name,  0:50  to  040 

d.  Descriptive  Name  and  Words,  040  to  075:  p.  305;  1055, 

1058.  1001,  1008.  1071,  1073,  1074,  1077,  1081,  1091, 
1098,  1108,  1128,  1130,  1132,  1130,  1138,  1140,  1152, 
1154,  1181,  1180,  1190,  1192,  1219 
See  Words. 

e.  Fancy  Names,  080  to  098;  p.  301 ;  1055,  1001, 1070,  10&8, 

*1093,  1094,  1104,  1115,  1110,  1121,  1124,  1127,  1130, 
1133,  1134,  11:35,  1139,1142,  1145,1155,  1170,1187, 

1190,  1191,  1195,  1190,  1199,  1213,  1219 

/.  Geograpliieal  Name,  705  to  730;    p.  304;  32,    413,   590, 
823,  1057,   1092,  1099,  1100,  1121,  1123,  1143,  1310, 
1219 
g.  Nom  de  plume,  880,  1101 
h.  of  Buildings.     See  Buildings;  Signs. 
i.  of  Invention,  1008,  1071,  1081,  1108,    1173,   1180,    1181, 
118;J,  1192,  1193,  1200,  1207,  1209 
See  Patentee,  Name  of. 
j.  of  Inventor,  1071,  1075,  1081,  1108,  1120,  1181,  1183,  1193, 
1193,  1200.  1207,  1200 
See  Patentee,  Name  of. 
k.  of  Patented  Article,  1008,  1071,   1081,  1108,   1173,  1180, 
11H;5,  1190,  1193,  1190,  1200,  1207,  1209 
Sec  Patentee,  Name  of. 
I.  of  Product  of  Nature,  059,  718,  727,  829,  1057,  1137 
w.  of  Publications.     See  Publications, 
w.  of  third  party  as  u  trademark,  144,  1053,  1134,  1318 
See  Div.  h,  siq/ra;  Assignment. 


TXDEX. 


527 


OG,  1215 


J,  1080,  HOC; 


494,  553,  5G4 


us  own  name 

1077,    1080, 

I,  1140,  1148, 


).  3G5;  1055, 
,  1081,  1091, 
s  1140,  1153, 


,  1070,  10&8, 
,  1127,  1130, 
,  1170,  1187, 
I 

!,    413,   590, 
1143,  1210, 


1180,    1181, 

1183,  1192, 

1172,  1180, 

1137 
,  1218 


H73,    118:i, 


0.  Ono's  own    name  as    a   tradcmaik,    25,    5ST     5'»->     (ios 

"!i:,'\'';U*^'<^-   i'^V'    ''"'    'l'^'    lll'.>, '11247  1140 
11. )2,  11. ,7,  1107,  lli)8,  1200,  1218 
See  Div's  h,  ?/,  miprn. 
2K   Parliicrshii)  names.     Sec  PartntTship 
q.  Patc-nwo,  name  of,  731  to  735  ;   1077,"  1081 
1193,  1200,  1207,  1209 
"JVntioD'i/  A<lr„(vlr''  case,  892 
National  arms  as  a  trarlemark,  1158 

Natural  pro.liict,  name  of,  G59,  718,  737,  839,  1057    11^7 

"iV^;  /V//.V  I'ltra.  "  needles,  1013  ' 

''  Krtr  Era"  (iiewspjiper),  89G 

Newspapers,  names  of.     rfee  Publications. 

"■Neic  Vor/y  ola<js,  G45 

"iV^'/r  ^ '/)•/,■  ^'^,i/;„i/,il  A'lfociift'"'  case,  8{)2 

"■Ni<jl,t  Biaoiiiiiii)  Caru.i'''  case,  547,  G51 

"iV^^  1"  plouirhs,  050 

"No.  3"  ploiiylis,  05G 
Nomd'j  plume.  880,  1101 

"  NoiD'lxhiiiij  iitvnt  '■  GOO 
Nostrums.     See  ilisrepresentation. 
Numerals,  740  to  745;  510,  G50,  G74,  947,  1054 
Oiler  to  discontinue  infringement,  effect  of,  216,  219,  221    472 
'•  0/>io  Liuimeid''  case,  8,  9,  114,  301,  341,  449   '        '  ~"  ' 
"  OU  hmihti  Doric  Gin  "  G52 
' '  Old  Moore's  Fam ilij  Pictorial  Almnnack;  "879 
"  Old  Real  John  Bull,''  890 

One's  own  name  as  a  trademark,  25,  587,592  GOS  (511  (^^R 
020,  1077,  nil,  1118,  1119,  1134,  1140  1152  im' im 
1198,  1200.  1213,  1218  '  '  '     ^^' 

See  Assiynment. 
restraint  in  tlie  use  of,  GOO  to  G23;  p.  373;  lOGO  1077   lOSO 

I212:  nm  '''''  ''''' ''''' '''''  ''''^^  "^^  i'^«'  I'so; 

Openition  of  law   acquisition  of  trademarks  by,  85,  97,  99,  121, 

lOt),     l*4rw,     1t:Oj     I'lt} 

Orb,  device  of,  1,  G98 

'' Orientale  Creme,'' ij21 

Origin  and  Ownership,  750  to  7G0;  1070,  1154,  1219 

Original,  use  of  word,  GIO,  871,  1034,  1097 

'' Ori[/in(il  C/dorodi/ne"  cnse,  871 

"  Oriyinal  lieadiiKj  Sauce."  1025 


pw 


528 


Index. 


r 


t  : 


Own  name,  one's  own.     See  One's  Own  Name. 

Ox's  head,  device  of,  306,  1181 

"OJ.•mws^»v/,"!3G0 

Packages,  sliajie  of  as  a  trademark.     See  Form. 

''Pain  Killer"  eases,  840,  453,  081,  088 

''Pall MM  Guinea  CoaV  case,  09,  r».')7,  590 

Paper,  color  and  stj'le  of  as  a  trademark,  19,  159 
See  Labels;  Form. 

''Papier  criime  <le  Wa"  case,  1120 

"Papier  de  riz''  cases,  1130,  1140 

" Papier  Job'' cmea,  1088,  1117,  1139,  1175,  1217 

" Paraffine  Oil,'' am 

"Para/jon  de  Fox"  cases,  1190,  1195 

"Paragon  Met  C"  cases,  1190,  1195 

"  Parfitmec  "  case,  1098 

"Parlor  Match"  case,  195,  308 

Parties,  705  to  770:  809,  820 

Partnership,  780  to  818;  p.  373;  014.  707,  870,  1080,  1081,  1084, 
1080,  1148,  1179,  1193 

Partnership  name.     See  Partnership. 
Patent,  p.  288. 

See  Patentee.  Name  of, 
use  of  the  word,  121,  GOO 
See  ilisroprcsentation. 
not  like  a  trademark,  433,  200 

Patented  article,   name  of,    1008,   1071,   1081.  1108,  1172,  1180, 
1183,  1190,  1193,  1196,  1200,  1207,  1209 
See  Patentee,  Name  of. 

Patentee,  name  of,  731  to  735;  1077,  1081,  1172,  1183,  1193,  1200, 

1207,  1209 
"Patent  Glace  Thread,"  8G3 

Patent  Office,  U.   S.     Rules  for  registration  of  trademarks  and 
labels. 
Appeals  in  trademark  applications,  Rule  80.  p.  477 
Articles  not  manufactxircd  in  this  country,  term  of  protec- 
tion of  tradeniiiik  registered  therefor.  Rule  85.   j).  476 
Assignment  of  registered  trademarks.  Rule  88.  p.  478 

when  to  be  recorded.  Rule  88.   p.  478 
Benefits  of  label  act,  to  wliom  confined,  p.  483 
Certificate  of   registration  of  print,   or  label,  duration  of, 

p.  481 
Conflicting  applications,    proceedings   in    regard  to,    Rule 

80.  p.  477 
Declaration,  by  whom  verified.  Rule  84.  p.  475 
requisites  of,  Rule  84.  p.  475 


T.VOKX. 


529 


081,  1084, 


173,  1180, 
193,  1200, 
narks  and 


»f  protec- 
p.  476 

478 


ration  of, 
to,    Rule 


pescnption  of  tiMdcinark  nM|iiir,..|,  Kiilc  si     i,    4r.'5 
Domicile  ici|i!in'.l  k,  i„.  n.(it,.,|.  |{ul,.  S4     p    47,-, 
Duration  of  proiciion.  Knic  s.-,.    p.  4:([ 

Ksscntial  ,.|,.m<.nts  of  tia.l.n.arks  to  l>o  <listinjruisl„.,l,  Ifulr 
"4.    p.  4  i>t 

Exception  ii,  favor  of  marks  in  iiso  on  July  H,  1870.  Hnle  S(j 
p.   (4( 

Facsimiles  of  trademark  rp(|tiire.|.  Hnle  H4.   p.  47.-) 
formalities  in  filin;.'.  Knie  87.    p.  477 
number  rc.piired.  Hnl,.  87.   p    477 
Foe,  amount  and  how  payal.l.-.  Knie  84.    p.  474 
for  i-ecordiiiM  a^^i^rnnieni.  |{iil..  SM     p   478 

FnrS  r^"'."'"'-,-''":"  '■'"'"•"'  '"  "■"^^''''•-  '^"l''  84.   p.  474 
lorm  of  lal»el  application,  p.   I8v» 

trademark  declaration  (or  oatln.  Itide  ;j().    p   470 
pctifi(.n.  Rill..  II.   p.  47H 
„       ,  S|»ecific;,lio„.   ]{„!,.  on.    ,,    47s 

tfoods,  particular  kind  to  Ih;  recited.  |{nie  84     p   47.-, 
Imerteieuces  (trademark,,  proceedings  iegardin<r,   liujo  86 
p.  477 

wluMMli-clared  in  trademark  cases,  Kulo  80.  p. 
477 
Label  application.  recpiisitoH  of.  p.  481 
Lawful  trademarks  alone  re^risfrable.  Rule  86    p   477 
Len^rth  of  time  used,  to  be  recited,  linlc  84.   p.  475 
Merchandise,  class  of.  to  be  jriven.  Rule  84.   p   47.1 
JNamesol  parties  retpiired  to  be  recited,  HuJc  84.   ]».  47.'i 

person,    firm,    or  cor|)oration,    when    retri.strabio 

Rule  8f».    p.  477  ' 

Petition  ro(|uired  to  be  filcfl.  Rule  84.   p.  47,j 
Place  of  business  of  jjarties  reipiired  to'be  recited,  Rule  84. 

p.  4*0 

ProceediiifTs  in  the  office.  Rule  80.   p.  477 
Protection,  who  may  obtain,  and  in  what  manner,  Rule  84 
p.  47.1 
term  of,  Rule  S',.   p.  470 
Registration  of   trademark,   proceedings  therein,  Rule  84 
p.  47.J 
when  refused.  Rule  80.   p.  477 
Regulations   to    be   prescribed   by  commissioner,   Rule   84 
p.  4(0 

Renewal  of  jjrotertion,  Rule  8.).   p.  470 

term  of.  Rule  8.'i.   p.  470 
Residences  of  parties  re(,uired  to  be  recited,  I{ule  84    n  47.T 
Restriction  on  the  registration  <,f  trademarks,  Rule  80.    >"  477 
bpecihcalion,  reiiuisites  of.  Rule  84.   p.  47.> 
Stateinent  by  applicant,  what  it  should  recite,  Rule  84    p 
4  <  5  ■   '  ■ 

Trademark  examiner,  applications  considered  by,  Rule  80. 

Transfer  of  right  to  registered  trademarks,  Rule  88.  p  478 
34  ^' 


r 


IPn 


,-1, 


' 


- 


!> 


530 


Index. 


Use,  miuinor,  or  mode  of,  to  b'>  recited,  Ruie  84.  p.  475 
"  Patent  Pliiftif>a(jo  Crueihles,''  540 
Patron,  use  by  pupil  of  name  of,  1122,  1125 

See  Master  and  Servant. 
''  PenuHijlmida  WUmt,''  711 
''Penny  IkU'n  Life"'  (newspaper),  898 
''  Pqqiermint-London'''  case,  1128 
"  Perfumed  Benzine  "  case,  1098 
Periodicals.     See  Publications. 
'^Perleit  tVether  "  case,  1130 

"  Perry  Bavin'  Pain  Killer''  cases,  346,  452,  681,  688 
"  Perry's  Me<Jicateil  Mexican  Balm,"  531 
''Persian  Thread"  cases,  4,  5,  6,  56,  57,  58,  86,  110,  112,  113,  236, 

237,  254,  258,  283,  413,  448,  914,  1001 
Persons,  names  of.     See  Names. 
'' PeMendcde"  watches,  315 
^' Pharmaeie  Cent  rale  de  France"  case,  1092 
*' Pharmacie  de  VAmlmnrnde  d' Anyleterre"  case,  1095 
*' Pharamcie  Itationalc  de  France,"  1093 
''  PhoKjthate-guano"  case,  1170 
'^PhoHpho-guano"  cases,  1176,  1182,  1186,  1191 
"  Pfiotographie  Helics"  (sign)  cases,  1160,  1161 
«'Pic;!-fe7,"655 

^'■Pictorial  Almanac"  case,  879 
Pictures.     See  Labels. 
Pig,  device  of,  262 

Place,  name  of.     See  Geographical  Name. 
Plays,  names  of.     See  Publications. 
"Plating"  iron,  case,  1038 
Pleading,  820  to  832 

Plurality  of  trademarks,  1113,  1141,  1144,  1154 
"  Poudre  hresilienne  "  case,  1104 
Practice,  840  to  850 
''Prairie  Tvbac"  case,  395 
" Prencott  House"  c&se,  \Zi: 
"Preserved,"  655 

Presumptions.     See  Evidence ;  Intent. 
Previous  use.     See  Prior  Use. 

Prior  use,  856,  857,  262,  1059,  1072,  1073,  1091,  1114,  1117,  1145, 
1149,  1160,  llCl,  1162,  1171,  1188,  1104 
See  Acquisition  of  Trademarks ;  "Words. 


I'" 


Index. 


631 


p.  475 


2,  113,236, 


117,  1145, 


Principles  and  npfiiiitloiis.  1  to  37 
I'riiitiii;;  liilti'Is.  1151.  IIS.J,  1205 
Prints.  ni,'isi ration  of.     Sec  Registration. 
Priviieired  questions,  2H4 
"  Prhr  .)[,;/„/  Pid-ftx,''  1010 

Product  of  nature,  name  of,  0r,9,  718,  727,   821),  1057,  1127,  1170, 
1 180 

Sec  Geographical  Name. 
Profits,  account  of.     See  Damajres. 
Proof.     Sec  Kvidence. 

metiiod  of  obtaining  it,  1185,  09 
Proper  names.     See  Names. 

Projterty  in  trademarks.     See  E.xcUislve  Right;  Words;  General 
Principles  and  Detiuitious. 

Prussia.     Treaty  witli  the  United  .^tates,  p.  405 

Pseudonymc.  880,  1101 

Public,  deception  of.     See  Misrepresentatio.i ;  Deception. 

Public  buildings,  vignette  of,  as  a  trademark,  1072 

Publications,  805  to  000 ;  ]).  372 

generally,  805.  800 

advertisements,  circulars,  ,^c.,  807,  873 

books,  plays,  &c.,  877  to  880 

newspapers,  800  to  009 
Puffery.     See  Misrepresentation. 
^^Pitnch''^  (newspaper),  005 
*^  Punch  and  Jiuly  "  (newspaper),  905 
Pupil,  use  of  name  of  patron,  1122,  1125 
See  Master  and  Servant. 

Purchase  of  trademarks.     See  Acquisition;  Assignment;  Partner- 
ship. 

Purchaser,  action  by,  170,  1153 

Quack  medicines.     See  Misrepresentation. 

Quality,  912  to  915 

Questions  of  fact  and  of  law,  920,  921,  922,  368 

Sec  Evidence. 
Rays  of  light,  device  of,  204,  098 
'•'■Reading  Sauce  ^'  case,  1025 
^'  licalJohii  BuW^  (newspaper)  case,  890 

Receptacles,  fraudulent  use  of,  174,   175,   176,  181,  1104,  1108, 
1173 
shape  of,  as  a  trademark.     See  Form. 
Recipe,  240,  242 

See  Trade  Secret. 


r>32 


Index. 


t'  i. 


f  i 


I  i 


l.# ,   :? 


II  ;>! 


1^        I 


li     :i* 


It     -J^ 


"  /.V 7  <r«^?  Tr//27e  Jhoh'''  case,  885 

Ilogiistriition. of  trademarks,  p.  :523;  295,  959,  1050,  1139 
of  ])rints  and  labels,  933 

Sec  Trademark  and  Label  Statutes  of  the  United 
States ;  Patent  OfHee  Rules. 
Remedies,  928  to  932;  1054,  1007,   1070,  1090,  1111,  1124,  1174, 
1210,  1211 
action  for  damages  will  lie,  15 
change  of  mark,  when  ordered,  1054,  1067,  1090,  1111, 

1134,  1174,  1310 
destruction  of  counterfeit  marks,  when  ordered,  930, 

1076,  1311 
Equity  will  protect.  14,  15,  30 

See  Injunction.  ' 

Resemblance.     See  Imitation. 

Restraint  of  one's  own  name.     See  Names. 

Retailer's  rigiit  to  reproduce  manufacturer's  mark,  1184 

"■  Iteverc  Ilouxe''  case,  88,  239 

Rice  paper  cases,  1120,  1146 

Right,  abstract,  to  use  trademarks,  23,  24 

See  Exclusive  Right. 
Right  lines,  device  of,  not  a  trademark,  1062 
Right  of  action.     See  Action,  cause  of. 
Right  of  retailers  to  reproduce  manufacturer's  marks,  1184 
"  Itmmj  Moon  Stove  Polish,''  098 
''Rising  Sun  Stove  Polish,''  698 

Rivalry,   unlawful  rivalry,  1079,    1080,   1081,   1086,    1090,   1095, 

101)0,  1099,  1100,  1134,  1139,  1148,   1150,   1152,    1155,   1165, 

1183.  1189,  1210,  1212,  1216 
"ife  cartonue  "  case,  1147 
''Roger  Willinms  Long  Cloth,"  684 
"Rouleau  de  riz  "  case,  1147 
"Royal  Victoria"  case,  1142 
Rules  of  U.  S.  Patent  Office.     See  Patent  Office. 
"  Satin  lion  jean"  cloth  case,  1058 
"  Scarlet  Water"  case,  1116 
"Schiedam  Schna/tfjn"  cases,  27,  28.  33,  34,  74,  183,  393,  394,  396, 

434,  495.  496,  567,  593,   616,  648,  661,   662,  663,  664,  665, 

1039 
Scienter.     Sec  Intent. 

Scientific  name.     See  Descriptive  Name. 

"  Scrap"  iron  case,  1038 

"  Scalshnnl  Cotton,"  111 

Seal  (family  arms)  device  of,  1154 

Seal  on  bottle  cork,  as  a  trademark,  1067,  1097 


Index. 


633 


Secret.     See  Trade  Secret. 
'  Scfton'"  cloth  case,  098 
"  Sei-o''  wire  case,  3G9,  370,  585,  586,  707 
'■'Serpent'''  case,  1138 

Sliape  of  packages  or  receptacles  as  a  trademark.     See  Form 
''  Siccati/brUliaid''  case,  1001 
''Sicilum  Hair  lienewer,''  Gil 
Signs,  940  to  949;  1080,  1086,  1089,  1090,  1092,  1105,  1156,  1160, 

See  Buildings. 
''Silver  Brook'' whiskey,  4U 
'^Siker  G^rorc  "  whiskej',  431 
Similar  j) roper  names.     See  One's  0\fn  Name. 
' '  Sit/I  mon ',«(  Licer  Me/h'cine,  "828  * 

"  Sin(/Ieton\s  GolJen  Ointment,'"  433,  1030 
' '  Singer  Macfi  inex,  "733 
Size,  as  a  trademark.     See  Form. 
Songs,  names  of.     See  Publications. 
"  Southorn'x  Brosely  Pipes  "  case,  106,  766 
Springs,  names  of,  059,  829 
^'  St.  James''  cigarettes,  729 
Star,  device  of,  094,  1056,  1110 
"Star  Candle,"  1170 
"Star"  pencils,  697 
"  Star  Shirt,"  mi: 
State  Buildings,  vignette  of,  1072 
Statutes.     See  Trademark  and  Label  Statutes 
construction  of,  957  to  974 ;  284 
right  to  trademarks,  not  dependent  on,  96 
Steamship  line,  name  of,  521,  594 

Stockholders,  their  right  to  the  corporation  trademark,  97 
"  Stonebrcakcfs  Medicines,"  009 
Stripe  on  Cloth,  device  of,  1194 

''Style  of"  (Fa^onde)    1077,  1108,  1135,  1183,  1200 

See  p.  379,  Art.  17 
Successor  of,  right  to  use  the  words,  800,  1044  1089 

See  Partnership.  ' 

"Sultan"  case,  1105 
Sun's  rays,  device  of,  264,  698,  729 
"  Si/per-jdiosphoasote"  case,  1182 
Surnames.     See  One's  Own  Name. 
Suspicious  conduct,  eflTect  of,  288 


534 


Index. 


V'  i 


"  Sweet  Opponax  of  Mexico''''  case,  551,  552 

Swine,  device  of,  262 

•'  Suken'  PatenV  case,  600 

Symbols.     See  Devices. 

"System  of,"  use  of  the  words,  1077,  1108,  1135,  1183,  1200 

See  p.  379,  Art.  17 
Table  of  Cases,  p.  499 

affirmed,  reversed,  cited,  criticised,  &c.,  p.  xix. 
Fancy  Names,  p.  361 
Descriptive  Names,  p.  365 
Geogra])hical  Names,  p.  304 
Hotel  Names,  «S;c.,  p.  370 
"  Taylor's  Persian  ThreatV  cases,  4,  5,  6,  56,  57,  58,  86,  110,  112, 

113,  236,  237,  254,  258,  282,  412,  448,  914, 1001 
"  Ternnux  SliaicW''  case,  1152 
Theatre,  name  of,  165 
"  Thomsonian  Medicines,"  643 
"  Toile  Menage''''  case,  1091 
Trademarks.     Analysis,  979 

In  general,  980  to  987 

General  Principles  and  Definitions,  1  io  37 

who  may  possess  them,  979,  10,  86,  183,  1113,  1141, 

1144 
How  acquired,  979 
Requisite  components,  979,  94,  104 
See  Form ;  Origin  and  Ownership. 
To  what  applied,  979 
Registration  of.     See  Registration, 
not  like  patents  or  copyrights,  4,  32,  200 
not  dependent  on  statutory  law,  96 
whether  limited  territorially,  18,  90,  1160 

Trademark  and  Label  Rules.     See  Patent  Office. 

Trademark  and  Label  Statutes.     Statutes  of  France,  p.  379 

United  States  Statutes    concerning   registered   trademarks   and 
labels; 

Abetting  one  dealing  in  fraudulent  registered  trade- 
marks, or  registered  trademark  goods,  how  pun- 
ished, p.  475 
Action  not  maintainable  when  trademark  is  used  in 

unlawful  business,  p.  470 
Affixing  fraudulent  trademarks,  jiennlty  for,  p.  472 
Articles  not  manufactured  in  this  rountr",  term  of 
protection  of  trademarks  registend  therefor,  p. 
469 
Commissioner,  to  make  rules  for  assignment  of  regis- 
tered trademarks,  p.  471 
prescribe  regui.i  ions,  467 


IxDi:x. 


535 


3,  1200 


p.  XIX. 


,  110,  112, 


37 

1113,  1141, 


10 

.  379 

•marks   and 

H'cd  trade- 
I,  how  pun- 

is  used  in 

)r,  p.  473 
■",  tt'rm  of 
liLiefor,  p. 

nt  of  regia- 

n 


Trademark  and  Label  SUitntva—cuntinucf?. 

Common-law  n<r|its  not  ahridired  hj-  statute   i)   471 
Compensation, i-ffristiant  aggrieved  mav  recover!  o   170 
Copies  under  otKcial  seal  to  be  ovidi-nco,  p   40!) 
Counterfeiting,  j)enalty  for,  p.  470 

registered     trademark     goods,     iiow 
_  punished,  p.  471 

Damages,   infringer  liable  to,  p.  470 
Dealing  in   counterfeit  registered  trademark  goods 
how  punisiied,  471 

in  fraudulent  trademarks,  how  punished,  p. 
47y 
Deceiving  the  ])ublic,  trademark  used  tlierefor,  not 

maintainable,  p.  470 
Declaration,  by  whom  verified,  p.  408 

under  oath  by  a|)i)lie4int  seeking  protec- 
tion, p.  408 
Description  of  the  mark  reipiircd,  p.  467 
Domicile  recpiired  to  be  recited,  p   4G7 
Duration  of  protection,  409 

Equity,  registrant  aggrieved  may  resort  to,  p.  470 
Evidence  of  registry,  p.  409 

Exception  in  favor  of  marks  in  use  on  July  8    1870 
p.  408  '  ' 

Fac-similes  of  trademarks  to  be  filed,  p.  467 
False  registration,  penalty  for,  p.  470 
Fee  for  renewal,  p.  409 

for  the  registry  of  trademark,  amount,  and  how 
payable,  p.  407 
labels,  p.  473 
.  .  prints,  p.  473 

Foreign  residents,  when  entitled  to  register,  p.  467 
Former  rights  and  remedies  i)reservcd,  p.  471 
Fraudulent  possession  of  enii>ty  box  or  package  bear- 
ing registered  trademark,  hovv  pun- 
ished, p.  473 
registry,    no  action   can    be   maintained 
upon,  ]).  470 
Goods,  particular  kind  to  be  rev;itcd,  p.  407 
Labels,  fee  for  the  registry  of,  p.  472 

for  articles    of    manufacture,    their   roo-istry 
authorized,  p.  473  ° 

Lawful  trademarks  alone  registrable,  p.  408 
Length  of  time  used,  to  be  recited,  p.  407 
Manufacturing  fraudulent  trademarks,   penaltv  for 
p.  473  1  J        . 

Merchandise,  class  of,  to  be  recited,  p.  4«i7 
Name  of  person,  firm,  or  corporation,  when  registra- 
ble, p.  468  '  '  b 


536 


Index. 


if:- 


I  ; 


W- 


Trademark  and  Label  Statutes — miitinwd. 

Penalty  for  selling,  or  offering  for  sale,  goods  be ir- 

ing  fraudulent  trademarks,  p.  471 
Prints,  fee  for  the  registry  of,  p.  473 

for   articles   of    manufacture,    their    registry 
uuthoriyx'd,  p.  472 
Proceedings  to  detect  fraudulent  trademarks,  p,  47;i 
Protection,  who  may  obtain,  and  in  what  manner,  p. 
407 
term  of,  p.  469 
Proviso  (section  4939),  class  of  cases  covered  there- 
by, J).  468 
Putting  up  packages  bearing  fraudulent  trademarks, 

penalty  for,  p.  472 
Registration  of  trademarks  authorized,  p.  467 

in  what  cases  refused,  p.  468 
Registry,  rights  secured  thereby,  p.  469 
Remedy  for  infringement  of  registered  trademarks, 

p.  470 
Renewal  of  protection,  p.  469 

term  of,  p.  409 
Restriction  on  the  registration  of  trademarks,  p.  468 

upon  actions  for  infringement,  p.  470 
Sale  of  coimterfeit  trademark  goods,  how  punished, 

p.  471 
Statement  to  be  filed  by  applicant,  what  it  should 

recite,  p.  407 
Time  of  receipt  of  trademark  at  Patent  Oftice  to  be 

noted,  p.  409 
Transfer  of  right  to  registered  trademarks,  ]>.  471 
Use,  manner,  or  mode  of,  to  be  recited,  p.  407 

Trade  Secret,  144,  152,  240,  242,  012,  995,  990,  1108,  1120 
Transfer.     See  Assignment. 
Translation.     See  Foreign  Words. 
"  TrappUthie''''  case,  1135 

Treaty  between  England  and  France,  1157,    1180,  1200,    1204, 

1209,  1214 

TTnited  States  and  Austria,  p.  493 

Belgium,  pp.  488,  489 
France,  §§  1200,  1214,  p.  491 
Germany,  p.  495 
Great  Britain,  p.  497 
Russia,  pp.  484,  480 

•'  Tucker  Spring  Bed''''  case,  735 

"  rwrm"  cloth,  096 

Unattached  trademarks,  1070,  172,  173,  433 

Uuited  States,  Statutes  of,  p.  407 


•• 


IF* 


foods  I)tMI'- 


r    registry 

•ks,  p.  473 
iianner,  p. 


ired  tlierc- 
ademarks, 
t67 

ademarks, 


ks,  p.  468 
p.  4T0 
punished, 

it  should 

[ice  to  be 

p.  471 
407 

0 


00,    1204, 


t89 

14,  p.  491 


JXDEX. 


o37 


Tiiited   S;  itcs.  Treaties  witli.     See  Treaty. 

Patent  Otiiee,     See  Patent  OHiee. 
"  riiitril  S''j/rx  J'oHcf  (hizettf''  case,  901 
Unlawful  rivalry,  lOTi),   10«(),  1081,  108(!.  1090,  10!»r,,  WM),  i  100 

li:J4,    IICO,  1148,  11-jO,  1152,    Uor,,    HG.-),    118;},  1189,  1210, 

1212,  1216 

Use.      See  Aequisition;  Exclusive  Right;   Prior  Ise. 

Variation.     See  Imitation. 

Variety  of  nnirks  used  hy  one  person,  111;},  1141,   1144,  1154 

"  Ve'jcfdhh'  SlrUmn  Hair  Ilene iter,""  Oil 

Vehicles,  87.  88,  ;)2(;,  594 

"  Vdao'>^  VfjcUiUc  Si/nip,'''  640 

"  VrfoHfliH!"  case,  1199 

Vendor,  1000  to  1005;  80,  709,  1155,  1184 

"  Verttulile  mu  (/e  Jhtot'"  ciiHC,  1097 

"  Victorm''^  lozenges  case,  1011 
Vignette,  1072,  1078.  1085,  1090 

See  Labels. 
"  Vinfi(frc(fe  Bnlhj"'  cases,   lio;},  1183 
Vindictive  damages,  230 
Vine  leaf,  emblem  of,  1130 
"  Vineyard  ProjnieUm'''  case,  1073 
Violation.     See  Infringement. 
"  Viryinia  Tohaccu,^''  711 
"  Vuu.  Beiint,''  055 
"  WashiiKj  Poin/er,''  1017 
Wax,  color  of.  1007 

Wharfingers  of  goods  witli  counterfeit  marks,  180,  931 
"  W/mt  Cheer  lloxxe''  case,  101,  102 
"  Wheebr  and  Wihon''''  machine,  732 

"  WiiMljw'n  Soothiiaj  Sjinqr'  case,  21,  98,  290,  494,  553,  504 
"  Wixtar'ii  Baham  of  Wild  Cherry,'"  532 
*'  Wonderful  Mafjuziiie,''''  877 
"  Wood')*  Hotel  "  case,  153 

"  Worcestershire  Sauce''  case,  309,  392,  722,  723,  1031 
Words,  1010  to  1038;  193.  009,  1029,  1142,  IISO;  p.  ,305 
See  Descriptive  Names;  Foreign  Words, 
combined,  009,  1029,  1142 
Wrappers.     See  Labels. 
"X  ^Vr;.  1"   i)loughs,   056 
"  Yankee  «>«;>,"  083,  085 


